THE NATIONAL ARBITRATION FORUM

MINNEAPOLIS, MINNESOTA

DECISION

Forum File FA000100009275

Jeremy Grodberg

            San Francisco, CA

                                    COMPLAINANT

           

Rugly Enterprises LLC

            Van Nuys, CA

                                    RESPONDENT

This is a DOMAIN NAME dispute between the parties (hereafter Grodberg and Rugly) and will be decided on the record provided by the parties.  Grodberg represents himself; Rugly is represented by Christie Parker & Hale LLP, Intellectual Property Lawyers.

ISSUE

The Domain Names at issue, registered with Network Solutions, which are the subject of this complaint are as follows:

                                    phonespell.com

                                    phonespell.net

                                    phonesspell.com

                                    phonespel.com

                                    phonespel.org

SUMMARY OF EVIDENCE

Grodberg asserts that PhoneSpell has been in continuous use by him since July 12, 1996 as the name of a web site and service for selecting telephone numbers based on what words they spell and other related services.  He notes that various news articles have reported on PhoneSpell and that he filed a Servicemark application on December 8, 1999.  He further asserts that the second level variations of the spelling are all pronounced the same and appear to be a misspelling or a typing error of PhoneSpell.

He also notes that Rugly, except for phonespell.com, is not commonly known by any of the “second level” domain names and is not making any commercial use of the other spelling variations.  Rugly has also been advertising on Grodberg PhoneSpell since 1998 and did not register phonespell until January 18, 2000 following unsatisfactory negotiation with Grodberg regarding these names.

Rugly argues that Grodberg is attempting to prevent anyone else from making “phonespell” as a second level domain and that Rugly’s use of phonespell is for services  that are quite distinct from Grodberg’s.  Rugly also notes that he purchased phonespell     .com from Taka Communications (registered March 19, 1997) which he now uses in connection with his Vanity toll-free number business.

FINDINGS OF FACT

1. Grodberg has an application for a Servicemark, but has not been issued a certificate for same and thus has no Trademark/Servicemark rights in phonespell.

2. Grodberg has made no showing that phonespell  has acquired any secondary meaning.

3. Rugly and Grodberg have businesses that are somewhat similar but are not identical.

4. Following the purchase of phonespell.com from Taka Communications in October 1999, Rugly has been using that name to further his business.

5. Grodberg seeks to have all the disputed domain names transferred to him.

CONCLUSIONS

The parties are engaged in similar but not identical businesses to provide “Vanity” or easy to remember words or phrases from telephone number keypads (e.g. 1-800-CALL ATT); they apparently are not the only companies which provide this service.

Grodberg may have started using PhoneSpell earlier than Rugly, but for whatever reasons did little in a timely manner to protect his exclusive  interest in the word and the various (mis)spellings he now seeks to claim.  He also knew or should have known that since phonespell.com was not available to him that other parties had an interest in these names.  Negotiations between the parties failed to produce a satisfactory result, following which Rugly purchased  phonespell.com from Taka Communication.

Both parties want exclusive use of these names at issue and/or to prohibit their use by others.

DECISION

It is the decision of the undersigned that the disputed Domain Names shall not be transferred to Grodberg.

This the 2^nd day of March 2000.

                                                                      

I further certify that I have no known conflict of interest to serve as Arbitrator in this proceeding.

Honorable Marilyn W. Carney (Ret.)

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