Inter123 Corporation lost its bid to grab the domain name mobile.co who was represented by David D. Lin of Lewis & Lin LLC, New York.

The Complainant launched its website in March 2013 at mobile.pro, to provide an online community for mobile communications industry professionals and filed a trademark on the term Mobile.co on March 20, 2014.

Its a pretty interesting case in terms of dealing between the parties but pretty disappointing in terms of the result for the reader as they panel found the complainant having been granted the trademark they applied for in 2013 had to rely on a common law trademark which the panel found the could not estiblish

Here are the highlights of the three member panel decision:

In early 2014, Complainant learned that the disputed domain name was for sale through the domain name auction site at Sedo.com.

A third party, Chadi Ghaith, had registered the disputed domain name and it was hosted on GoDaddy LLC’s server.

Complainant negotiated with Ghaith for purchase of the disputed domain name and reached an agreed price of $59,000.

Ghaith then sent Complainant a “Transfer Overview” page. The purchase agreement between the parties stated that, “in the event a breach of this agreement results in a failed attempt to transfer control of the purchase object mobile.co from seller to buyer, the aggrieved party shall have the right to demand specific performance in lieu of monetary damages.”

Once Complainant’s identity was revealed, Ghaith refused to honour the agreement and did not transfer the disputed domain name to Complainant.

When Ghaith was informed of the suit Complainant brought in the District Court of Arizona, Ghaith attempted to renegotiate sale of the domain name for “not below a $150k reserve.”

Prior to these events the domain name had not been used but now Ghaith began offering services that directly competed with Complainant.

Ghaith then transferred the domain name to Respondent, a personal friend.

13. The disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.

14. Respondent has no rights or legitimate interests in the domain name.

15. Respondent has never been commonly known by the disputed domain name.

16. Respondent acquired the disputed domain name for the purpose of furthering the prior owner’s fraudulent scheme to extort money from Complainant.

17. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

18. Respondent registered and is using the disputed domain name in bad faith.

19. Ghaith and Respondent acquired and registered the disputed domain name for the purposes of engaging in a deliberate and fraudulent scheme to extort substantial sums of money from Complainant by trying to sell the disputed domain name.

B. Respondent

1. Complainant’s allegations do not pertain to any conduct by Respondent apart from his purchase of the domain name from the prior registrant.

2. Complainant asserts a breach of contract claim that is inappropriate for resolution under the UDRP process.

3. There are pending legal proceedings that involve the same issue presented in these Administrative Proceeedings.

4. Complainant has failed to satisfy the elements set forth in the UDRP 4(a) because it does not have trademark rights in the descriptive term “Mobile.”

5. Complainant should be held to have engaged in reverse domain name hijacking.

C. Complainant’s Additional Submissions:

1. Pending litigation does not require dismissal; rather, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

2. It is a fair and reasonable assumption that Respondent has been inextricably involved from the moment Ghaith transferred the disputed domain name.

3. Complainant has common law rights in the MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO trademarks.

D. Respondent’s Additional Submissions:

1. There is no possibility that the USPTO will register Complainant’s trademarks since the word “Mobile” (and its Spanish language equivalent, “Movil”) merely describe Complainant’s business and Complainant has not provided any evidence of use proving secondary meaning.

Complainant contends to be the owner of the trademarks MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO in the United States of America, since their first use in March, 2013. Those trademarks are currently pending registration before the USPTO.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.

Equally, it is the consensus opinion of panelists that a pending application for registration, of itself, gives no such trademark rights. Accordingly, in this case, Complainant must establish unregistered or common law trademark rights if it is to succeed with its Complaint.

In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.

Therefore, to determine whether or not Complainant owns unregistered trademark rights the Panel must, as a threshold matter, be able to identify a reputation in respect of the name or sign in question. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, available at http://www.wipo.int/amc/en/domains/search/overview2.0/1.9, asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.

In this case Complainant essentially lays claim to rights in the term MOBILE (or its Spanish language equivalent) either with or without the identifiers “.CO” or “.PRO”, it not being entirely clear from the submissions.

In any event nothing turns on that point since UDRP panelists have long held that the addition of a gTLD or ccTLD to a trademark adds nothing of distinguishing value over and above the trademark. Many panelists, for example, will for the purposes of paragraph 4(a)(i) treat TRADEMARK. COM as “legally identical” to TRADEMARK.

Moreover, this Panel is aware that the USPTO has a similar attitude to the registrability of trademarks which reproduce a domain name. In particular, if the USPTO regards a trademark as prima facie descriptive and unregistrable, then the addition to that trademark of, for example, “.co” or “.pro” will do little if anything to improve the stakes.

In this case Complainant’s trademark applications remain pending and the Panel is told that there is resistance to their registration for reason of lack of distinctive character. Panel need not assume the job of the USPTO examiner since from the Complaint itself Panel is told the Complainant launched the website at to provide an online community for mobile communications industry professionals. In other words, the name was chosen because it was entirely apt to describe the character of the services. On this basis Complainant faces the additional hurdle of showing secondary meaning in a descriptive term other traders are likely to desire to use for their similar services.

The evidence does not advance Complainant’s position. Panel is told that Complainant’s Chairman and Chief Executive Officer, Mr. Jeffrey Peterson, is highly recognized for work for the Hispanic community in the United States of America and that the business has approximately USD 4 million in funding and more than 100 shareholders. Panel is told in broad terms that the promotion of the business under the name MOBILE or MOBILE.PRO is via the Internet and mainly directed to the Hispanic community.

In spite of the great many people who primarily speak Spanish or who would regard themselves as part of the Hispanic community, this information does very little to assist the Panel to understand the reach and recognition of the trademark as an indicator of Complainant’s services and not as a reference to mobile communications services generally.

Finally, it is noted that this enterprise only gained momentum in March 2013. Even allowing for the speed at which online businesses can now promote themselves to a broad audience, the fact remains that 15 months is a very short timeframe for any directly descriptive term to rise to a level where it is connected in the minds of the public, or even a section of the public, with one business undertaking.

For these reasons, this Panel is not able to conclude that Complainant has common law trademark rights and accordingly Panel finds that Complainant has failed to establish the first limb of the Policy.

Rights or Legitimate Interest

No findings required.

Registration and Use in Bad Faith

Again, no findings required.

DECISION

Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.