DECISION
The VideoCall Company v M Koenig c/o
Techton LLC
Claim Number: FA0307000167922
PARTIES
Complainant
is The VideoCall Company, Austin, TX (“Complainant”). Respondent
is M Koenig c/o Techton LLC, Santa Monica, CA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <videocall.com>, registered with Register.com.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on July 7, 2003; the Forum received a hard copy of the Complaint on July 7,
2003.
On
July 8, 2003, Register.com confirmed by e-mail to the Forum that the domain
name <videocall.com> is registered with Register.com and that the
Respondent is the current registrant of the name. Register.com has
verified that Respondent is bound by the Register.com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
July 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 29,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@videocall.com by e-mail.
A
timely Response was received and determined to be complete on July 29, 2003.
On
August 6, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered
Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainant’s
Rights in and to the VIDEOCALL Marks
VideoCall
is a well-known, single-source provider of video teleconference products and
services, headquartered in Austin, Texas. (The factual allegations in
this Complaint were verified by the Declaration of Richard King) Since
1993, VideoCall has offered video teleconferencing and network hardware coupled
with expert services in custom design, system integration, installation,
training and maintenance. Through use and development, VideoCall has
gained valuable rights in the VIDEOCALL Marks.
Since
June of 1993, VideoCall has continuously used the VIDEOCALL Marks in relation
to video teleconferencing hardware and services. VideoCall has received
substantial recognition as a result of the extensive advertising, marketing and
promotion of the VIDEOCALL Marks through various media:
Television
The
VIDEOCALL Marks have been promoted through national and regional television
broadcasts. From 1993 to 1995, over 14 million households received cable
television programs bearing the VIDEOCALL trademark onscreen during lengthy
interviews with newsmakers, for an average of six times per day.
Moreover, the VIDEOCALL Marks have been promoted on screen during the
nationally televised Sally Jesse Rafael show and the Joan Rivers’
syndicated program “Can We Shop?” Screenshots from these shows appear in
the VideoCall Update publication submitted with the complaint.
Print
Since
1993, the VIDEOCALL Marks have been featured in articles in national newspapers
such as The New York Times and the Austin American Statesman, and regional
publications such as the Austin Business Journal and Texas Lawyer.
Examples of these articles were submitted with the complaint.
In
addition to attention from the media, VideoCall publishes its own print
advertisements that feature the VIDEOCALL Marks.
Internet
Since
as early as 1998, VideoCall has used the domain name
<videocall.net>. This website garners significant traffic for
VideoCall and serves as the company’s online contact with consumers.
Pages from VideoCall’s web site at <videocall.net> and Whois information
relating to same were attached to the Complaint. Moreover, the Internet’s
preeminent search engine, Google, further underscores the status of the
VIDEOCALL Marks as unique identifiers of goods and services. A search of
the entry “videocall” generates a link to VideoCall’s web site as the top-rated
result. Copies of Google results pages were submitted with the complaint.
Awards
In
1996, VideoCall’s ingenuity and services earned it an award for “Outstanding
Advance in Video On Command or Cable” from TeleCon, a leading organization of
the video teleconference industry. A photograph of the plaque awarded by
TeleCon is submitted with the Complaint.
Clients
Representative clients of VideoCall’s
services include:
AT&T
IBM
Motorola
Subaru
Advanced
Micro Devices
Gannett
Company
Halliburton
Energy Services
First USA
Bank
Qwest
Communications
Siemens
International Creative Management, Inc.
University
of Texas
Texas
A&M University
Baylor
University
VideoCall’s
use of the VIDEOCALL Marks in connection with its goods and services is
arbitrary and has no recognized meaning in the field of video teleconference
services except as designating VideoCall as the source of its goods and
services. Further, by dint of VideoCall’s ten years of sales, offering of
services, and promotional activities, and in view of the millions of viewers in
the American cable television audience that are familiar with VideoCall’s
services, the VIDEOCALL marks are famous.
Respondent’s Improper Use of the
VIDEOCALL Marks
Respondent is the registrant of the
domain name <videocall.com>. Copies of Whois registration
information for the <videocall.com> domain name were submitted
with the Complaint. VideoCall claims Respondent has improperly used the
VIDEOCALL marks by (after notice of confusion by Complainant): increasing
consumer confusion by redirecting traffic intended for <videocall.com>
to <focusfocus.com> – the web site of Complainant’s competitor; and
demanding that Complainant pay Respondent $50,000 in exchange for the domain
name <videocall.com>. As a result of this improper use,
described in further detail below, the <videocall.com> domain name
should be transferred to the rightful owner of the VIDEOCALL Marks,
Complainant.
Confusing
Similarity
The
domain name <videocall.com> is confusingly similar to the
VIDEOCALL Marks since it is identical to the VideoCall trademark
VIDEOCALL™. Given the similarity in name, there is a strong likelihood of
confusion between the Domain Names and the VideoCall Marks. See Ty,
Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000)(finding that the domain
names <beanybaby.com>, <beaniesbabies.com>, and <beanybabies.com>
are confusingly similar to complainant’s mark “Beanie Babies”).
Moreover,
Respondent’s use of the domain name at issue has already generated several
instances of actual confusion to the detriment of VideoCall:
1.
Prior to October of 2000, Respondent’s web site appearing at <videocall.com>
depicted pornographic products and services. Two VideoCall customers –
The University of Texas and Austin Community College – each contacted VideoCall
to inquire why VideoCall’s website offered pornography products and services;
and
2.
During October of 2000, Respondent redirected Internet traffic from <videocall.com>
to <focusfocus.com> – the web site of a VideoCall competitor. (As
explained below, after VideoCall contacted Respondent about the trademark
issues and confusion created by the domain name, Respondent redirected traffic
to the domain name to VideoCall’s competitor, FocusFocus.) On October 31,
2000, VideoCall received an email from an existing customer that was confused
by the <videocall.com> web site. That confused customer
stated “I have looked at your web site and was directed to focusfocus.com - is
this a new company name?” A copy of this email message was submitted in
the Complaint.
Within
the last month, Respondent again redirected traffic intended for <videocall.com>.
Traffic is now directed to <hotline.com>, a for-profit travel site
believed to be operated by Respondent. Like the earlier instances of
actual confusion, customers and prospective customers searching for VideoCall on
the Internet are likely to be similarly confused by this new redirection.
Respondent Has No Legitimate Rights or
Interests in <videocall.com>
Respondent has no legitimate rights or
interests in either the VIDEOCALL Marks or the disputed domain name. In 1998,
Respondent used the domain name to link to pornographic websites.
Respondent’s use of web sites to present pornographic material is not unique to
this domain name. In a trademark infringement case before the United
States District Court for the Central District of California, the court found
that Respondent was using another domain name to advertise pornographic
websites. See Order Granting Plaintiff’s Motion for Preliminary
Injunction submitted with the Complaint.
In 1999, Respondent directed traffic
intended for <videocall.com> to an online mall providing thousands of
goods and services. In response to concerns from VideoCall that
Respondent’s use of <videocall.com> was damaging VideoCall’s trademarks,
Respondent responded by redirecting all traffic to <videocall.com> to
the website of VideoCall’s competitor, FocusFocus. A copy of the
FocusFocus website as it existed prior to April 30, 2003 was submitted with the
Complaint.
Respondent is not affiliated with
FocusFocus. Representatives of VideoCall previously contacted FocusFocus
and spoke with owner Jillian Pinsker requesting that they stop using
<videocall.com>. Ms. Pinsker stated that she had called Respondent
and requested that he stop directing <videocall.com> to <focusfocus.com>.
Respondent did not do so. It is obvious that Respondent’s sole intent in
directing traffic to a website operated by VideoCall’s competitor – but against
that competitor’s wishes – indicates Respondent’s sole intent was to exert
pressure on VideoCall to purchase the domain name. This is not a
legitimate interest.
Between May 14, 2003 and May 30, 2003,
Respondent changed the redirection parameters so that traffic intended for
<videocall.com> is now directed to <hotline.com>.
Respondent can claim no legitimate
interest in the domain name. Based upon the existing online content, no
goods or services are currently offered in connection with the domain name
<videocall.com>. Respondent is not in any way associated with
VideoCall. Respondent has adopted the VIDEOCALL Marks solely for the “for
profit” purposes of: (i) trading upon VideoCall’s goodwill;
(ii) increasing traffic; (iii) intentionally tarnishing and diluting
the VIDEOCALL Marks; and/or (iv) to sell the domains to VideoCall for
substantially more than the cost of registration.
Bad
Faith
Respondent’s
registration of the domain name constitutes bad faith pursuant to the Uniform
Domain Name Dispute Resolution Policy (“Policy”) paragraph 4(b). Because
the domain name is so similar to the trademarks at issue, Respondent’s intent
to create a likelihood of confusion may be presumed. See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that
the domain name in question is so obviously connected with the Complainant and
its products that its very use by someone with no connection with the
Complainant suggests opportunistic bad faith).
Moreover, Respondent’s bad faith is made abundantly clear by
the following sequence of events:
-
In 1998, VideoCall contacted Respondent, explaining that Respondent’s use of <videocall.com>
to advertise pornography was damaging to VideoCall's reputation with its
clients. While Respondent refused to return any of VideoCall’s seven (7)
phone messages, Respondent did reply to VideoCall’s email. In its email,
Respondent offered to sell the domain name <videocall.com> to
VideoCall for $50,000.
- In 2000, Respondent redirected all traffic to <videocall.com>
to the website of FocusFocus, a competitor of VideoCall. As explained
above, FocusFocus requested that Respondent cease redirecting traffic to its
site, and Respondent’s actions were a blatant attempt to exert pressure on
VideoCall to extort a huge payment for the domain name. (As explained
above, Respondent’s intended efforts to create confusion for VideoCall’s
customers were successful.)
- On March 21, 2001, VideoCall contacted Respondent via
registered letter regarding the <videocall.com> domain name,
explaining the confusion caused by Respondent and seeking an amicable
resolution between the parties. A copy of that letter was supposed to be
attached to the Complaint but was not (a copy of the Policy was attached
instead, for unknown reasons). Respondent did not respond to this letter.
The
facts support a single conclusion: Respondent has no legitimate rights in the
domain name <videocall.com> other than to trade upon the
established goodwill of the VIDEOCALL Marks. Respondent’s adoption and
continued use of <videocall.com> to the intentional detriment
of VideoCall is in bad faith, has continued with full knowledge of
VideoCall’s prior rights, and is a willing infringement of VideoCall’s
trademark rights.
Further,
under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C.
§ 1125(d), it is illegal to register, use, or traffic in domain names that
are either identical or similar to marks with an intent to profit from such
activities. Respondent clearly intends to profit from the false
association of <videocall.com> with VideoCall. The ACPA sets
forth several factors to consider in determining bad faith. The first
factor is whether the registrant has any trademark or other intellectual
property rights in the domain name. Here, as shown above, Respondent can
assert no rights in the domain name. The second factor is whether the
domain consists of the legal name of the registrant. This factor is not
applicable here. The third factor is whether the registrant used the
domain in connection with goods and services. Here, there is no active
site associated with the domain name, and no goods or services offered in
connection with the domain (although Respondent did redirect traffic to the
site of VideoCall’s competitor). The fourth factor is the registrant’s
noncommercial or fair use of the mark in a site accessible under the domain
name. This factor is inapplicable here. The fifth factor focuses on
whether the registrant intended to divert consumers from the mark owner’s
online location to another site by creating confusion. As explained
above, this was clearly Respondent’s intent, and this factor favors
transfer. Factor six involves the registrant’s intent to sell the
domain. As already explained, the offer to sell the domain name to
VideoCall for $50,000 shows that Respondent intended to profit from the
domains at issue. The seventh factor is whether the registrant supplied
misleading contact information. This factor is inapplicable: VideoCall
cannot determine whether Respondent has registered the domain name under a
false name. The eighth factor addresses whether the registrant acquired
multiple domain names that are confusingly similar or dilutive of famous
marks. As mentioned above, Respondent has faced prior litigation over
other domain names. The final factor considers whether the trademark at
issue is “famous” under the Lanham Act’s anti-dilution provisions. Here,
VideoCall’s marks qualify as “famous” within the niche of their services
offered because they have been long-used on a national basis and are recognized
by Internet users. The ACPA factors support the conclusion that
Respondent’s conduct constitutes bad faith.
Because
<videocall.com> is confusingly similar to trademarks in which
VideoCall has rights, Respondent has no rights or legitimate interests in
respect of the Domain Names, and the Respondent’s bad faith has been
established through multiple actions, the <videocall.com> domain
name should be transferred to VideoCall.
B.
Respondent
ICANN Rule 3(b)(ix)(1); ICANN
Policy 4(a)(i)
The domain name is not identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights. The Complainant does not own or hold a Federal Trademark or
service mark in the United States of America or in any other part of the world.
The domain name is comprised of generic
and/or descriptive terms, and, in any event, is not exclusively associated with
Complainant’s equipment installation business.
Notwithstanding this fact, Complainant
claims protection under “common law trademark rights” that are limited to
the geographic area in which the mark is used as they have been developed under
a judicially created scheme of rights governed by state law and since no
registration is required in order to establish common law rights to a mark, it
can be difficult to prove whether anyone has real trademark rights in a
particular mark.
Common law trademark rights
protection can’t be applied to protect common nouns for products or services
and Federal Patent and Trademark Laws also disallow such registrations. This
basic rule prevents registrations like, “phonecall” for a phone company; or
"pen and pencils, inc" if that's what is sold.
Even though a generic, merely descriptive
mark or common noun cannot constitute a viable common law mark, Complainant
decided to prove that consumers see his chosen brand name or abbreviated
company name as an indicator of the product's source, but Complainant claims
and evidence fail to verify that.
It also fails to establish either fame, or strong secondary
meaning in the mark, such that consumers are likely to associate with
Complainant business, especially at the time the domain name <videocall.com>
was registered or even today. Moreover, use alone does not automatically
represent trademark recognition or acquired distinctiveness and hundreds of
websites and companies are using the term “videocall” in connection with
videoconferencing, and none are related to Complainant business or products.
Complainant presented evidence
The inconsistencies found after reviewing
the evidence presented by Complainant is overwhelming, as well as the
deliberate concealing of evidence and known material facts, of which the
Complainant is aware.
For the purpose of proving “common law
trademark rights” the Complainant presents manufactured evidence by means of a
color copy of what looks like a promotional brochure with no date, featuring
retouched pictures and fabricated pointless “interviews”, which may have never
been distributed.
This “timeless publication” is clearly
misrepresenting Complainant’s company’s capabilities, experience and size,
trying to capitalize and take credit for some other company’s work and
capabilities like Unitel Video Inc.
Complainant’s “brochure” states: “ You
can book VideoCall’s 26 worldwide video suites for business communications”,
when in fact Complainant does not operate any of these, did not install or sell
a video room in Tokyo, Japan and doesn’t even have a particular product called
“videocall”.
One of the simulated interviews reads:
“How much does a VideoCall cost?” and the answer clearly shows that Complainant
is using the term in connection with the action of placing a call (like a
“phone call”) stating an outrageous hourly rate for a “videocall”, bringing
even more confusion to define what Complainant understands, as “videocall”.
Complainant’s business focus seems to be:
sales, installation and maintenance of video conferencing equipment
manufactured by other companies, with different names but not “videocall” and
merely uses the word “videocall” as an acronym of “The Videocall
Company”, or coincidently with the action of “making”, “booking” a call and not
in connection with any real and tangible goods or services.
The article from the New York Times
presented by Complainant mentions “Richard King, chairman of the Video Call
Company of Austin Texas”. It just mentions a company that happens to have a
‘Video’ and a space ‘Call’ (generic and/or descriptive terms) as a part of its
name and not VideoCall nor a service under that name.
The pictures featured in the article seem
to be supplied by Unitel Video Services and show the studio monitors with a
close-up of the “remote” image showing Mr. John Boy. At no time any of this
monitors have any caption or lettering featuring “the Video Call Company “ its
logo, or “videocall”.
The chances of having millions of people
see the image, that features Mr. John Boy, as presented by Complainant’s
“brochure” are slim to none.
Please note that none of the other images
utilized by Complainant resembling broadcasted television have any reference to
“videocall” except one that as explained by its caption text above is a “test”,
and not necessarily broadcasted “to millions of users.”
Technically challenged “486 processors”
were used at that time, as described by Complainant’s exhibits. I strongly
doubt any possible “television broadcast quality” can be achieved with
those “486 processors” over regular phone lines, but maybe some tests
were conducted.
The fact that Complainant may have been
part of the team connecting, experimenting or setting up that videoconference
connection ten years ago, is not tangible evidence of the continuous use (to
claim common law rights) of “videocall” in broadcasting television in any form and
the pictures fail to prove that as well as the article itself.
The other three articles presented by
Complainant are in small local newspaper publications. Obviously “arranged”
articles, and by no means are representative of “extensive” advertising, marketing
or promotion as claimed by Complainant.
The only reference made, about the
Complainant, by the Austin Community College website, at which Complainant
claims in the Texas lawyer article to have a facility that “will offer a room
for up to 100 participants”, clearly shows the Complainant as one of the
“professional associations that have made use of our facilities”
basically listing “VideoCall” as one of the companies that eventually rented
the videoconference room.
Complainant is misrepresenting once again
in this Texas Lawyer article its company and achievements in an obvious effort
to mislead potential customers into believing that “VideoCall” has now 52
rental sites and opened a videoconferencing room at the Austin Community
College facility, when in fact complainant just eventually rents the space, as
well as Newstalk Television which is also mentioned as one of the Complainant’s
“clients”)
The list of equipment used by the Austin
Community College for videoconferencing does not include any “videocall”
equipment, service or room.
Complainant claims that
<videocall.net>, its Internet website, is listed first (among other 700
plus sites) when searching for the term “videocall” ,by the search engine
Google and that this particular search engine “ further underscores VIDEOCALL
marks as unique identifiers of goods and services.”
Google uses obscure selective process and
algorisms to order the results of a search. Unfortunately this particular
search engine considers some services that “sell” positions as “important”
pages or sites, affecting the results. This highly contagious situation also
gets reflected throughout many search engines that are considered “important
pages” by Google.
Search engine results in general are
particularly influenced by several factors, not limited to, how many pages are
in the site, how many times the word “videocall” is in the body of the pages,
html metatags, text, and even if it paid on a pay-per-performance listing.
The fact that search engines are listing
the Complainant’s website among the first results, only proves the proficiency
and ability of the creator of the website pages to follow the rules of
engagement to get listed on a search engine and nothing else.
Moreover a search will return over 700
plus results using the term “videocall” and only a couple of links belong to
the Complainant. This confirms that Complainant is not the only company or
search engine listed website using the term ”videocall” and none of the
other 700+ sites refer to goods or services provided by complainant thus,
unable to claim exclusive use, or that the public associates all video calling
with Complainant.
The award that the Complainant received
seems to be from Telecon and is dated October 30, 1996. Well after the
registration of <videocall.com> took place. We were unable to
retrieve any information on the TeleCon event that Complainant refers to in the
picture provided with the Complaint.
TeleCon was the world's largest
conference and trade show on teleconferencing and TELECON XV was held in,
Anaheim, California. October 25-27, 1995. Please note that:
TELECON XIV was held on 1994
TELECON XV was held on 1995 and not in
1996
TELECON XVI was held on
1996
TELECON XVII was held on 1997
TELECON XVIII was held on 1998
If Complainant’s award is from TELECON XV
held in, Anaheim, California, the award should read: October 30, 1995 and not
October 30, 1996 unless the “Fifteenth TeleCon Awards dinner” event that
Complainant assisted to, was a different event, at a different location, that
has no relation with “TELECON XV, the world's largest conference and trade show
on teleconferencing”.
Advanstar acquired Telecon organizing
company in May 1998. We contacted Advanstar but no records of Telecon XV
can be retrieved on such a short notice, but they did verify that Telecon XV
was held on October 1995, and did not have any knowledge of Complainant’s
Company.
Complainant claims to have the most
important American Companies as clients, but supplies no evidence of any substantial
commercial relation with any of them before 1996 or even today.
At no time does the Complainant establish
a legitimate right over the mark that it claims or the domain <videocall.com>
and fails to present evidence capable of corroborating any of his claims or
passing any reasonable test required to prove that a mark has ever acquired
distinctiveness or is perceived as a unique identifier of any particular goods
or services.
We are not even able to establish what
the real name of the Complainant’s company is, when and where it is
incorporated, or even if it’s the same company as stated on the Complainant’s
actualized website, (which never mentions any of the 56 video rooms claimed in
the Texas Lawyer article). Under -Company Overview- reads as follows:
“Founded in 1991, VideoCall is a videoconference service provider …” and not
“The VideoCall Company” since 1993.
The Complainant now states in this
complaint to be organized as “The VideoCall Company”. Then the
Complainant is in fact aware of the trademark applications #74333083 filed on
1992-11-20 and also application # 74450039 filed on 1993-10-22 that also show
the same address than the Complainant’s “brochure”. Both applications were
presented by “The VideoCall Company” and rejected by the US Patent and
trademark office.
In any case, the Complainant is either,
deliberately concealing relevant evidence, aware of the fact that the mark is
"merely descriptive" or once again, trying to capitalize on someone
else’s company or a previous enterprise.
Whether it is the same company or not, could be important at
the time of establishing prior and continuous use, but still irrelevant as it
never established secondary meaning, and made no attempt to do so by
registering the mark on the US Patent and Trademark office Supplemental
Register.
Complainant communications.
Complainant contacted us via email for
the first time on July 1999, 37 months after we registered videocall.com on
1996.
That first email over three years after
the <videocall.com> registration states that: “videocall was
incorporated in 1993 and used videocall for over six years”. Now the website
<videocall.net> operated by the Complainant tells a different story, but
most importantly, it also substantially differs from the filed claim and the
filed trademark applications.
On successive responses, Complainant
claimed to be part of other companies responsible for other “videocall”
trademarks, which are now cancelled like “videocall plus” presented by Biocom
Inc. but it never was.
Complainant acknowledged on his emails
and it is aware of the fact that “videocall” is a generic, descriptive word and
thus not eligible for protection. In fact nobody holds a “videocall” trademark
today, but declared his intention to obtain protection “over time”.
Unfortunately nothing will change the
past and even if Complainant manages to establish Common law rights in the
future, the fact that no protection was achieved at that time will still remain
the same.
Even after recognizing that a trademark
would never be obtained Complainant insisted with out a valid argument that we
should surrender the domain name to him, to what I obviously responded, no.
Then Complainant offered $500.00 and
threatened to “start interrogations”. To what I responded that “I had better
offers for over $50,000.00. No deal.” I never intended to sell the domain or
offered the domain for sale to anybody but I received an unsolicited offer, as
well as Complainant unsolicited emails and considering that
<videophone.net> was for sale for millions ($7,000,000.00 is still
today’s asking price) I refused to sell for $500.00.
Unfortunately Complainant believes that a
comment about another offer is the same as requesting a price or offering the
domain for sale. I never requested any amount and Complainant obviously fails
to present any evidence to that effect.
Later on, Complainant called several
times in what I remember to be a harassing call after another, sent an
intimidating letter and finally taking matters into his own hands decided to
pay us an uninvited and unwanted visit.
These facts confirm that Complainant is
knowingly concealing evidence committing perjury and setting up a “scenario” to
fit his needs. Nobody ever ask him pay, call, or to visit us.
Complainant
domain registration
Complainant registered the domain name
<videocall.net> 21 months after Respondent registered <videocall.com>
on 1996 and did so, obviously aware of our domain name registration, thus
unable to claim surprise.
Unfair competition
The claims presented by Complainant
regarding the “unfair competition” are unfounded just because
<focusfocus.com> was intended for videoconference online services and not
room installations or broadcasting television networks. In either case Complainant
never offered online services, not even today.
Other
relevant facts
Complainant seems to operate from the
same main address but with different suite numbers like #301 as stated on the
“brochure,” #100 on the domain registration, and #400 for this claim, but not a
single videoconference room seems to be operating at these addresses.
Complainant still today uses its Internet
site <videocall.net> to promote commercial grade videoconference room
installations and not videoconference services rendered over the Internet.
Although different products are offered,
Complainant started using the Internet as a channel to offer his services
almost TWO years after <videocall.com> was registered on 1996.
We were not aware of a Complainant’s
company, or the existence of a valid or active trademark (not even today), and
proceeded to register the name <videocall.com>.
.
ICANN Policy 4(a)(ii)
We began to use the domain name in
connection with a bona fide offering of goods and services 3 years before
receiving an email notice regarding a possible conflict and over 7 (seven)
years before this Complaint was presented.
The registration was the result of
reasoning, after using <vdo.net> (now defunct) videophone, in 1996 for
the first time with a 14,400 Kbs modem and the obvious use of the term in
connection with videoconferencing.
If you use a phone you can say you are
making a phone-call, but if you use a Video Phone, are you making a
video-call? I registered it, <videocall.com>.
To trademark something, which is the common
noun for products or services, is not allowed. I can't trademark, “phonecall”
for my phone company; or "pen and pencils, inc" if that's what I
sell. Therefore I knew nobody could trademark videocall in connection with
videoconferencing using a videophone or any other similar device.
We also registered around that time,
<videoguard.com> (that we lost for non payment). We decided to integrate
a videophone application into and alarm software capable of detecting video motion
changes and triggering an alarm over the Internet with Cinecom (now defunct)
using of the shelf Winnov PC video capture cards hardware.
In the meantime the domain was pointed to
a videoconferencing site operated by Interactive Gallery, Inc. then a Nasdaq
listed company, and now a subsidiary of New Frontier Media, a Nasdaq listed
company (Nasdaq:NOOF) as a co-branded version with authorized, copyrighted and
legal adult entertainment content.
Regardless of the content, <videocall.com>
was offering video with chat services since the beginning, and years before
even knowing about the Complainant or its business.
But that was not our plan for this domain
and even though it became known in the this field, we still decided to point
the domain to <shoppingblvd.com> that was offering free on line video
chat services software accessible to anyone trough focusfocus.com until we
could materialize out initial plan.
From thereon the Complainant recall of
dates might be accurate but irrelevant when it comes to prove bad faith, intent
to divert consumers or to tarnish a trademark and specially at the time of
registration.
Unfortunately the Internet bubble busted
and we decided to postpone our initial plans, but we kept the domain for the
purpose of developing online video conferencing services.
We recently registered
<callvideo.com>, before receiving this Complaint, to compliment the <videocall.com>
registration as we still expect eventually to accomplish our initial plans.
I particularly knew that cellular videophones
came finally out 4 years ago in Japan. Now they are a big hit here in the USA,
and that may trigger our imagination once again.
The domain name should not be considered
as having been registered and being used in bad faith.] ICANN Rule 3(b)(ix)(3);
ICANN Policy 4(a)(iii)
Techton LLC was incorporated in
California in 1996. It owns and operates hundreds of domain names and after
more than 7 years in business this is the first time that is part of an
arbitration proceeding.
In what I understand it’s a desperate
attempt to show a “pattern” of disregard for intellectual property, although
there is no evidence of such conduct whatsoever, the Complainant introduced as
evidence a copy of the preliminary injunction that was granted against Techton
LLC in the year 2000, that is obviously irrelevant to this case.
Notwithstanding this and as the
Complainant pointed out Techton LLC was in fact years ago the defendant in a
fabricated trademark infringement Federal Court case.
A Canadian Napster like software
developer initiated legal action against Techton LLC with the sole purpose of
hijacking one of our domain names but abandoned short after been unable to
support any of their fraudulent claims and conveniently disintegrated soon
after.
One unsuccessful malicious claim in seven
years of operating hundreds of domain names can’t be considered a pattern, and
after such an undesirable and costly experience, my company pays particular
attention as it obviously did form day one, to avoid any possible trademark
conflict before registering any domain name.
Furthermore the registration of <videocall.com>
was not for the purpose of selling it to Complainant or a competitor and the
Complainant was never contacted with any offering.
Only one domain was registered, leaving
all the other possibilities open, thus it is impossible to infer that the
registration was done with the purpose of preventing a rightful trademark owner
to register any of them.
Domain
names directly related to Claimant’s company, like <videocallcompany.com>
or the<videocallcompany.com> are still available for registration.
At the time of registration the
Complainant’s business was not online under any domain name, it never provided
online videoconferencing services, it was not known, much less famous, never
had a trademark and its hardly a competitor in any of the different stages of <videocall.com>.
Complainant has not proven that we
registered the disputed domain name for commercial gain with the intent to
confuse Internet consumers. Our registration and use of the disputed
domain name was in good faith as they were intended to promote online
videoconferencing, as we did form day one.
If there is a likelihood of confusion
between the domain name and Complainant’s domain name, is because of
Complainants registration and not otherwise
Although Complainant consumers are vastly
different from ours, (at any stage of <videocall.com> history),
it’s the Complainant that decided 21 months after our domain registration and
after unsuccessfully trying to register a trademark (if its in fact the same
company), or even having possible protection even under “common law” to
use the same channels of marketing and thus exposing our existing and his
potential Internet consumers to possible confusion.
Complainant has provided no substantial
evidence showing that our use of this domain name created any disruption to its
business and fails to present any proof.
There is absolutely nothing for which we
could possibly have known of Complainant’s business before registration, and
such knowledge, is imperative to prove that the registration was “in bad
faith”.
FINDINGS
This
decision turns on the Panel’s finding Complainant has no interest in
“VIDEOCALL” as a trademark.
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
the Respondent has no rights or
legitimate interests in respect of the domain name; and
the domain name has been registered and
is being used in bad faith.
Identical and/or Confusingly
Similar
This
entire case has caused the Panel to reach for the keyboard to start surfing the
Internet several times while reading the pleadings to supplement the material
submitted by the parties. It would be inappropriate to do so because
ICANN proceedings are “documents only” proceedings. While the materials
submitted by the parties were interesting, the most concise recitation of the
controlling facts appeared in an email exchange Respondent provided.
Complainant
submitted an application (“through BioCom” according to Richard King, the
contact person for Complainant in this UDRP proceeding) to the United States
Patent and Trademark Office to trademark “VIDEOCALL PLUS” on November 20,
1992. As part of this application, Complainant disclaimed any rights to
“VIDEOCALL” apart from “VIDEOCALL PLUS”.
This
disclaimer eliminated any special common law trademark rights Complainant had
(if it ever had any) to “VIDEOCALL.” It should also be noted none of
Complainant’s material clearly indicated “VIDEOCALL” was a trademark (which is
commonly, but not always, done with a superscripted TM).
Rights or Legitimate Interests
Respondent
has demonstrated legitimate interests in the disputed domain name because the
domain name is comprised of generic terms that are legitimately open for
registration as domain names on a first come, first served basis. See Car
Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20,
2000) (finding that Respondent has rights and legitimate interests in the
domain name where Complainant submitted insufficient evidence to establish
either fame or strong secondary meaning in the mark such that consumers are
likely to associate <cartoys.net> with the CAR TOYS mark); see also
Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat.
Arb Forum August 5, 2002) (finding that because the domain name was generic
term and there was no evidence that Respondent knew or should have known of
Complainant at registration, Respondent’s use of the domain name as a search
engine is a bona fide use giving rise to rights and legitimate
interests). Respondent has been using this domain name since May 15, 1996
– and it is a little late for Complainant to start proceedings seven years
later.
Respondent
has a legitimate interest in the <videocall.com> domain name
because the <videocall.com> domain name was registered on May 15,
1996, while Complainant’s <videocall.NET> domain name was
registered on February 12, 1998 (about 21 months later). In the intervening
years, Complainant did nothing.
Lest
anyone think the Panel does not know what is going on here, let me explain for
the casual reader. “Video Call” are commonplace and descriptive
words. The Panel believes Respondent registered this domain name for
future development (probably by sale or possibly by putting its own web site at
the domain). While holding a domain name for resale would normally be an
indication of bad faith, it does not indicate bad faith when the domain
name consists solely of words that are not Complainant’s trademark.
Under
these conditions, the Panel does not ever reach the question of whether or not
Respondent was using the domain name in connection with a bona fide
offering of goods or services. Based upon the claims at hand (which
consist primarily of accepting the Complainant’s word because Complainant did
not provide documentary evidence – such as screen printouts - and Respondent
failed to rebut the claims), the Panel has serious doubts forwarding the domain
name to Complainant’s competitor or posting links to pornography sites
constitutes a bona fide offering of goods and services relating to
this mark.
Complainant
did not disclose whether it asked ForcusFocus to install a block on all browser
referrals from <videocall.com> and what FocusFocus’ response was
to this request. Such a block normally prevents one domain name from
simply forwarding to another domain name.
Registration and Use in Bad
Faith
Respondent
did not know of Complainant’s alleged rights in the VIDEOCALL mark when it
registered the <videocall.com> domain name because the domain name
is comprised of generic terms. Thus, it did not register the domain name in bad
faith. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb.
Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it
is difficult to conclude that there was a deliberate attempt to confuse on
behalf of Respondent, and stating that “[i]t is precisely because generic words
are incapable of distinguishing one provider from another that trademark
protection is denied them”); see also Lowestfare.com LLC v. US Tours &
Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith
where Respondent was using the descriptive domain name
<thelowestfare.com> to lead consumers to a source of lowest fares in good
faith).
Respondent
did not attempt to sell its domain name registration to Complainant, and there
is no evidence supporting the proposition Respondent registered the domain name
with any bad faith intent. See PRIMEDIA Special Interest Publ’n Inc. v.
Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding Respondent did not
register the domain names in bad faith where there is no evidence Respondent
intended to sell the domain name or disrupt Complainant’s business); see
also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186
(Nat. Arb. Forum Feb. 21, 2002) (finding that "when a Complainant indicates
a willingness to engage in a market transaction for the name, it does not
violate the policy for a [Respondent] to offer to sell for a market price,
rather than out-of-pocket expenses"); see also Etam, plc v. Alberta Hot
Rods, D2000-1654 (WIPO Jan. 31, 2001) ("Respondent’s offer to sell the
domain name does not constitute bad faith, in light of the fact that it has a
legitimate interest in the domain name"); see also Seaway Bolt &
Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5, 2002)
(finding that the speculation in domains that reflect ordinary dictionary words
is not bad faith unless Respondent registered the name with the intent of
selling the registration to Complainant or a competitor of Complainant).
In this case, the email exchange shows the process of “negotiations” and the
Panel is a little concerned Complainant did not provide this information with
its Complaint.
DECISION
Having
failed to establish all three elements required under ICANN Policy, the Panel
concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: August 20, 2003