DECISION

Icerocket.com LLC v. ClientCorp

Claim Number:  FA0410000339605

PARTIES

Complainant is Icerocket.com LLC (“Complainant”), represented by Heather C. Brunelli of Thompson & Knight, LLP, 1700 Pacific Avenue, Suite 3300, Dallas, TX 75201.  Respondent is ClientCorp (“Respondent”), 2870 Peachtree Road, NE, pnb 705, Atlanta, GA 30305.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <icerockets.com>, registered with Go Daddy Software, 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 Complaint to the National Arbitration Forum (the "Forum") electronically October 7, 2004; the Forum received a hard copy of the Complaint October 8, 2004.

On October 8, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <icerockets.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. 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 October 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 2004, 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@icerockets.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 11, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 domain name Respondent registered, <icerockets.com>, is confusingly similar to Complainant’s ICEROCKET.COM mark.

2. Respondent has no rights to or legitimate interests in the <icerockets.com> domain name.

3. Respondent registered and used the <icerockets.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has operated a search engine at the domain name <icerocket.com> since March 20, 2004, and on August 9, 2004, Complainant applied for a registration for a federal service mark for ICEROCKET.COM with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 76/606568).  Complainant’s registration application states that the ICEROCKET.COM mark is used in connection with “computer services, namely providing search engines for obtaining data on a global computer network; extraction and retrieval of information over a global computer network; providing indexes of links to webpages over a global computer network.”

Complainant claims that Mark Cuban, the owner of the Dallas Mavericks professional basketball team, is affiliated with the domain name <icerocket.com>.  Mr. Cuban operates a weblog named “blog maverick,” which is located at <blogmaverick.com>.  On August 1, 2004, Mr. Cuban posted a blog that stated he was “working with a company called IceRocket.com.”  Since that time, Complainant argues, the search engine has generated considerably more traffic.  In fact, Complainant attached a printout from Alexa dated October 3, 2004, which tracks Internet traffic to Complainant’s search engine website (Exhibit E).  The printout lists Complainant’s “Traffic rank” for the preceding three-month period as being 14,382. 

Other exhibits Complainant included in the record are the WHOIS registration information for the disputed domain name (Exhibit A), a printout of Complainant’s search engine website (Exhibit B), the WHOIS registration information for Complainant’s domain name <icerocket.com> (Exhibit C), Mr. Cuban’s blog spanning the month of August (Exhibit D), the filing receipt for Complainant’s service mark application (Exhibit F), printouts from Respondent’s website located at the disputed domain name (Exhibit G), and a copy of the UDRP (Exhibit H).

Respondent registered the disputed domain name <icerockets.com> August 5, 2004.  The domain name resolves to an adult-oriented website that contains “Worldwide Listings of Independent Escorts.”  The website also contains the following warning: “This web site is intended for a mature audience.  Must be over 18 years.”

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."

In view of 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.

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 was registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant alleges rights in the ICEROCKET.COM mark as the result of Complainant’s service mark registration application and continuous use of the mark.  It is true that some panels have found or alluded to the potentiality for rights to exist in a mark as the result of trademark or service mark applications with legitimate governmental authorities.  See, e.g., Serverworks Corp. v. Directname, FA 146929 (Nat. Arb. Forum Apr. 14, 2003) (“Complainant has established rights in the SERVERWORKS mark through proof of application for a trademark with the USPTO, as well as through use of the mark in commerce.”); ROI Solutions, Inc. v. Jaewan, FA 95914 (Nat. Arb. Forum Jan. 17, 2001) (“[A] pending federal trademark application, combined with prior use of the mark is sufficient evidence on which to find that Complainant 'has rights' in a trademark or service mark.”); Aston v. Pierrets, FA 117322 (Nat. Arb. Forum Sept. 27, 2002) (stating in dicta that “[e]vidence that Complainant is actively seeking trademark protection for a mark in question is enough to show rights in the mark sufficient to establish standing.”).

Yet, the majority of cases decided under the Policy have found that pending trademark or service mark applications alone are insufficient to establish standing under the Policy.  In fact, one panel has stated that “the broad consensus under the Policy is that a trademark application alone is not sufficient” to establish rights in a mark.  PRGRS, Inc. v. Pak, D2002-0077 (WIPO Apr. 24, 2002); see also Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant's pending trademark applications do not establish any enforceable rights to the mark until a trademark registration is issued); see also Razorbox, Inc. v. Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (“Complainant's pending trademark application does not in and of itself demonstrate trademark rights in the mark applied for.”); see also Tribute, Inc. v. dotPartners, LLC, FA 109702 (Nat. Arb. Forum Aug. 20, 2002) (“It is not sufficient [to establish standing] to assert a pending trademark application or mere use.”); see also Bar Code Disc. Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001) (“[A]n application for registration standing alone establishes neither rights nor presumptions.”).

Of particular importance in the instant case is the fact that Respondent registered the domain name <icerockets.com> August 5, 2004.  Complainant did not file its registration application for the ICEROCKET.COM mark with the USPTO until August 9, 2004.  The “vast majority of decisions” under the Policy require a complainant’s rights in a mark to predate the registration of a disputed domain name.  Abt Elecs., Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004).  Even were the Panel to assume arguendo that Complainant’s pending service mark application is sufficient to establish rights in the ICEROCKET.COM mark, the fact that Complainant relies on rights that postdate Respondent’s domain name registration bars any claim by Complainant under the Policy.  Therefore, for Complainant to establish standing under the Policy, Complainant must prove common law rights that arose prior to August 5, 2004, in the ICEROCKET.COM mark.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”).

Although Complainant did not assert common law rights in the ICEROCKET.COM service mark, the Panel will undertake the inquiry.  Common law rights arise in a mark as the result of the adoption and actual use of the mark in commerce in association with goods or services.  In the instant case, Complainant adopted and used the ICEROCKET.COM mark in commerce in association with its search engine services, among others. 

However, protection of a mark is withheld until such a time as the mark acquires secondary meaning.  A mark acquires secondary meaning when, “in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself.”  Inwood Laboratories v. Ives Laboratories, [1982] USSC 106; 456 U.S. 844, 851, n.11 (1982).  In proving secondary meaning, typically a party may provide evidence of the extent of sales and advertising of the mark, the length of use of the mark, the exclusivity of the use, customer surveys establishing an association between the public and the mark, or even the number of customers that purchase or use the good or service.  In the instant case, Complainant has attached Exhibits A-H.  Yet, the only evidence Complainant has advanced that even remotely bears on whether the primary significance of the ICEROCKET.COM mark in the public’s mind is to identify the source of Complainant’s search engine services is the printout from Alexa (Exhibit E).  Alexa lists Complainant’s Internet traffic rank (three-month average preceding October 3, 2004) as being 14,382.  The primary problem with this data is that it is unclear what tie binds the traffic ranking to proof of secondary meaning.  It may quantitatively prove how many times a website has been accessed, but it proves very little with regard to who is actually accessing it and how many different Internet users accessed it. In short, reasonable questions surround the reliability and accuracy of such a printout in terms of evidentiary value.  Most significantly, however, is the lone traffic rank listing of 14,382.   The ranking simply lists a barren number without any relation to other website traffic or the criteria that created such a number. 

Therefore, the Panel finds that Complainant has failed to establish common law rights in the ICEROCKET.COM mark and lacks standing under the Policy.  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).

Since Complainant failed to establish standing pursuant to paragraph 4(a)(i) of the Policy, it is unnecessary to address paragraphs 4(a)(ii) and (iii) of the Policy.  See Creative Curb v. Edgetec International Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the petition for relief shall be Denied without prejudice to refiling.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 22, 2004.

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