WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan
Case No. D2000-0165
1. The Parties
Complainant is Blue Sky Software Corp., a Delaware corporation located in La Jolla, California, USA.
Respondent is Digital Sierra Inc., a corporation located in Garland, Texas, and Abdullah Khan, an individual.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <robohelp.com>.
The registrar is Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The complaint was filed on March 15, 2000. Respondent filed a response on April 5, 2000. Mark V.B. Partridge was appointed as single panelist on April 13, 2000.
Complainant filed a reply brief on April 17, 2000, after the referral of the case to the Panel. Respondent filed a response to the reply on April 20, 2000. Both submissions were unsolicited. The Rules do not provide for the submission of additional statements or documents after the Response unless requested by the Panel at its sole discretion. See Rule 12. Because of the expedited nature of these proceedings, absent unusual circumstances, it appears appropriate to exclude late submissions that have not been requested by the Panel. See J.P. Morgan v. Resource Marketing, ICANN Case No. D2000-0035. Here, it appears that the late submissions merely provide additional argument. Since neither submission provides any additional evidence, they will not be considered or addressed in this Decision.
4. Factual Background
Complainant is a developer of computer software programs for the Help authoring industry, including various products sold under the ROBOHELP mark since March, 1992. Complainant is the owner of several U.S. registrations and applications for the ROBOHELP mark, including Reg. No. 1,732,772, dated November 17, 1992, and has registered the domain names robohelp.org and robohelp.net.
Respondent registered the domain name <robohelp.com> in 1997. Respondent has not used the domain name for a website or email address.
After filing a complaint under NSIís prior dispute policy, Complainant contacted Respondent. In response, Respondent sent an email message stating "Please call me . . . to discuss the terms of transfer." When Complainant offered $3000 to resolve the dispute, Respondent stated: "$3000 is not even close to what Iím thinking. Let me check you [sic] company profile and then Iíll set a target figure for you." A subsequent message from Respondent states, "Iím looking for figure close to $100,000." Complaint, Exhibit E.
5. Partiesí Contentions
Complainant contends that respondent is a cybersquatter who attempts to profit by reserving and reselling domain names back to companies who own a corresponding trademark.
Respondent claims he is an electrical engineer who is fascinated by advancements in the field of robotics. He claims the purpose for registering <robohelp.com> is to operate a website to provide a central communication and brain dumpsite for robotics hobbyists and scientists.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
1. that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. that the respondent has no rights or legitimate interest in the domain name; and
3. the domain name has been registered and used in bad faith.
A. Similarity Between Domain Names and Trademark
In this case, the domain name registered by Respondent is identical to the registered trademark of Complainant. The addition of .com is not a distinguishing difference. Therefore, Complainant has satisfied the first element of its claim.
B. Respondentís Legitimate Interest In Domain Names
Under Paragraph 4(c) of the Policy, evidence of a registrantís rights to and legitimate interest in the domain name includes:
1. demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
2. an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
3. legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Here, respondent has submitted no evidence of any demonstrable plan to use the domain name in connection with a bona fide offering of goods or services. There is no evidence that it has ever been known by the name, or that it has made noncommercial or fair use of the domain name.
Had Respondent offered evidence to support its claim that it originally registered the domain name with the intent to use it for a website directed at robotics hobbyists and scientists, which it claims, it may have established a legitimate interest under the Policy. However, Respondent has failed to present any such evidence, and the other evidence presented is all to the contrary. The email messages between Respondent and Complainant are completely devoid of any hesitation about selling the domain name and contain nothing to support Respondentís contention that it adopted the domain name with a legitimate interest in using it for the bona fide offering of goods or services. Respondentís email statements--"$3000 is not even close to what Iím thinking"and "Let me check your company profile and then Iíll set a target figure for you"-- seem to be the words of a sophisticated profiteer who registered the domain name for the purpose of selling it back to the owner of the trademark registration. Respondentís current, unsupported claim to the contrary seems to be mere pretext offered as justification after the fact.
C. Bad Faith Registration and Use
Under Paragraph 4(b)(1) of the Policy, evidence of bad faith registration and use includes circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit.
Based on the evidence submitted, it appears that the domain name "robohelp.com" was registered and used by Respondent for the purpose of reselling it to the trademark owner for substantial profit. Based on Complainantís "company profile," Respondent decided the domain name was worth $100,000. The email between the parties contradicts Respondentís claim in this proceeding that he was "never interested in selling the domain" to Complainant and set a high price "to rebuff their efforts." Accordingly, we find that Respondentís conduct is contrary to Paragraph 4(b)(1) of the Policy.
We conclude that (a) the domain name <robohelp.com> is identical to the trademark ROBOHELP, (b) Respondent has no rights or legitimate interest in the domain name, and (c) Respondent registered and used the domain name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <robohelp.com> be transferred to Complainant.
Mark V.B. Partridge
April 27, 2000