Domain name - Second Level Domain name - Service Mark/Trade Mark - Identical - Similar - Misspelled - Variations

Complainant applied for but did not receive a certificate of Service Mark for the name phonespell.  Complainant maintains that it should have exclusive use of the domain name phonespell.com and its variations having applied for a Service mark prior to the Respondent’s registration of the domain name and its variations.

Held, domain name and its variations not transferred to Complainant

The Complainant and Respondent have businesses that are somewhat similar but not identical.  As such, Complainant failed to show that phonespell had acquired any secondary meaning.  Complainant did not take the necessary steps to establish exclusive control of the name phonespell in a timely manner.  The Respondent is using phonespell.com to further its business. 

DECISION
Forum File No.: FA 92975
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 Goldberg’s 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 2nd day of March 2000.
Honorable Marilyn W. Carney
Retired Chief Judge
Arbitrator
I further certify that I have no known conflict of interest to serve as Arbitrator in this proceeding.
Honorable Marilyn W. Carney
Retired Chief Judge
Arbitrator