Advertising-union.com

The timeline behind advertising-union.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Advertising.com, Inc. v. Adam Qi Claim Number: FA0710001088109 PARTIES Complainant is Advertising.com, Inc. (“Complainant”), represented by Blake R. Bertagna of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC, 20036. Respondent is Adam Qi (“Respondent”), 132 Dalhurst Way NW, Calgary, AB T3A 1N7 CA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <advertising-union.com>, registered with Enom, Inc. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complainant to the National Arbitration Forum electronically October 3, 2007; the National Arbitration Forum received a hard copy of the Complaint October 4, 2007. On October 4, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <advertising-union.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On October 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 2007, 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@advertising-union.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 29, 2007 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. The disputed domain name that Respondent registered, <advertising-union.com> domain name is confusingly similar to Complainant’s ADVERTISING.COM mark. 2. Respondent has no rights to or legitimate interests in the <advertising-union.com> domain name. 3. Respondent registered and used the <advertising-union.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Advertising.com, Inc., manages the industry’s largest online marketing and promotions network. Complainant registered the ADVERTISING.COM mark with the United States Patent and Trademark Office (“USPTO”) to promote its services (Reg. No. 2,577,256 issued June 11, 2002 and Reg. No. 2,914,052 issued Dec. 28, 2004). Respondent, Adam Qi, registered the <advertising-union.com> domain name January 8, 2007. Respondent is using the disputed domain name to provide its own advertising and marketing services. DISCUSSION Paragraph 15(a) of 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." Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical to and/or Confusingly Similar Complainant asserted rights in the ADVERTISING.COM mark through its registrations of the mark with the USPTO. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to a complainant. Therefore, the Panel finds that Complainant successfully established rights to the ADVERTISING.COM mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark). The disputed domain name that Respondent registered, <advertising-union.com>, contains Complainant’s ADVERTISING.COM mark in its entirety and adds a hyphen as well as the generic word “union.” These additions do not distinguish the domain name from the overall impression of Complainant’s mark and therefore the Panel finds that Respondent’s <advertising-union.com> domain name is confusingly similar to Complainant’s ADVERTISING.COM mark pursuant to Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel finds that Complainant satisfied Policy ¶ 4(a)(i). Rights to or Legitimate Interests Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name and has alleged that Respondent does not have such rights to or legitimate interests in the <advertising-union.com> mark and domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). However, even where Respondent does not respond to the Complaint, the Panel examines the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). Complainant contends that Respondent is not commonly known by the <advertising-union.com> domain name. The WHOIS information identifies Respondent as “Adam Qi,” and Complainant has alleged that Respondent is not licensed or authorized to use the ADVERTISING.COM mark or any variation thereof. Absent a response, the Panel can find no other information in the record indicating that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <advertising-union.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Complainant also has alleged that Respondent is using the <advertising-union.com> domain name to provide its own advertising and marketing services that seek to compete with Complainant’s services. Furthermore, Complainant has stated that the website that resolves from the <advertising-union.com> domain name also contains hyperlinks advertising third-party commercial websites. Complainant has suggested that Respondent receives click-through fees for Internet users that are redirected to these websites. Therefore, Complainant contends that Respondent’s use of the <advertising-union.com> domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel notes that the word “advertising” is a common word used for marketing purposes. Therefore, Respondent’s use of the <advertising-union.com> domain name accurately describes Respondent’s services: advertising and marketing. Based upon precedent, the Panel also finds that Respondent’s use of the <advertising-union.com> domain name to advertise various products and services, and receive click-through fees, does constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i). See Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001) (finding that “[n]either the current UDRP nor current ICANN registrar contracts preclude” the use of a domain name in the practice of registering domain names in connection with an advertising venture); Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services). Therefore, the Panel finds that absent additional evidence, the Panel cannot rule out that Respondent also has rights to and legitimate interests in the <advertising-union.com> domain name pursuant to Policy ¶ 4(a)(ii) under the provisions for bona fide use. The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Given the Panel’s finding as to Respondent’s rights to and legitimate interests in the <advertising-union.com> domain name by bona fide use pursuant to Policy ¶ 4(a)(ii), the Panel does not address the issue of Registration and Use in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. It is accordingly ORDERED that the domain name NOT be transferred. Hon. Carolyn Marks Johnson, Panelist Dated: November 12, 2007. Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.