WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Competitive Advantage, Inc .v. MailMania.com
Case No. D2000-0288
1. The Parties
The Complainant is Competitive Advantage, Inc of 1510 Chester Pike, Baldwin Tower, Suite 110, Eddystone, Pennsylvania 19022 United States of America.
The Respondent is MailMania.com of 77 Mowat Avenue, Suite 508, Toronto, Ontario M6K 3E3, Canada
2. The domain name and Registrar
The domain name at issue is:
and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on April 12, 2000 [electronic version] and April 14, 2000 [hard copy]. The Centre verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of commencement of this administrative proceeding is April 21, 2000.
On April 19, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on April 20, 2000, Network Solutions Inc transmitted by email to the Center Network Solutions Incís verification response confirming that the registrant is MailMania.com and that the contact for both administrative and billing purposes is Mr. Ray King of Wired Solutions Inc.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on April 21, 2000, to:
the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by May 10, 2000. On the same day the Center transmitted by fax and by mail copies of the forgoing documents to:
77 Mowat Avenue
Ontario M6K 3E3
Wired Solutions Inc
77 Mowat Avenue
Ontario M6K 3E3
The Response was received on May 1, 2000. The Respondent elected to have this Case adjudicated by a 3 member panel.
Having received Declarations of Impartiality and Independence and Statements of Acceptance from Mr. Jeffrey Samuels; Mr. G Gervaise Davis III; and Mr. David Perkins on May 22, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Messrs. Jeffrey Samuels, G Gervaise Davis III and David Perkins were formally appointed Panelists, with Mr. David Perkins as the Presiding Panelist. The Projected Decision Date was June 5, 2000. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
4.1 The Complainant
The Complainant, Competitive Advantage Inc operates a mail order service for children. The Complainantí s website [Exhibit A of the Response] states:
"The concept behind Mail Mania is simple. You buy a colourful, illustrated mail box from Dream Chaser Enterprises, via their toll-free line at 1-877-MAIL-4-KIDS. There are three different age-appropriate mail programs to chose from: Pet Shop Pen Pals (ages 4-8), Dream Riders (ages 8 and up), or Sneaker Seekers (ages 9 and up). Each mailbox contains a simple introductory kit to the program. All you and your child need to do is mark a choice of pen pal and/or subject matter on the enclosed reply card and send it in. Within a few weeks, your child will begin receiving personalised letters, one every two weeks. The initial $9.99 mailbox purchase includes six of these letters, providing three months of Mail Mania fun."
The Complaint states that the Complainant began using the trade mark "Mail Mania" on June 1, 1999. However, the Complainantís website [Exhibit A to the Response] refers to a "... launch date of 9/9/99.".
4.2 The Respondent
The Respondent is Raymond Marc King operating under the name and style of MailMania.com. Mr. King is an individual engaged in the development of Internet Software and Internet Websites. The Respondent states that he has developed several Internet Communication Programs and Exhibit D1 to the Response gives brief particulars of 4 such programs, namely QuickChat: ChatWorld: MailMania: MegaBoard: and DocuCom. The MailMania product is described as
"Essentially a Ďsecured mail serverí. Mail is both received and sent from a secure web page using either 40 or 128 bit Secure Socket Layers (SSL) encryption (depending on laws). MailMania is perfect for the Internet since it is fully Web-Based and can be accessed from anywhere in the world, all securely via SSL. The system is also instant. Because we deal with database technologies, we are able to ensure data is INSTANTLY available to the receiving party. Full auditing, tracking and reporting is also built-in and a pay-per-use scenario can easily be adopted."
The Response exhibits at D2 a copy of the homepage of the MailMania.com website as operated in the Fall of 1998. The Response states that thereafter the software packages were sold to a third party and the domain name in issue has been temporarily licensed to a third party.
It is admitted in the Response that the URL currently leads to a web site called NakedNewsNet.com, which is a referring source for Adult Internet Content. The Respondent states that to the best of his knowledge and belief and on assurance from the operators of that site, the content of the site is a legal and legitimate use of the Internet and complies with all laws of Canada and the United States. The Complaint refers to NakedNewsNet.com as a pornographic website but does not make any allegation that it violates any applicable laws or regulations.
4.3 The Complainantís Trade Mark
On December 14,1998, the Complainant applied to register the Mail Mania mark with the US Patent and Trade Mark Office for:
"Mail order childrenís project club featuring puzzles, games, stickers, mobiles, stories, and a childrenís letter periodically mailed that addresses one of several subject matters including games, puzzles and pets".
This US App. 75,604/706 was published as an INTENT to use a US trade mark on August 24, 1999. The actual TM has not yet issued but has been allowed as of May 5, 2000, according to US PTO records.
The Complaint states that the Complainant has used that Mark since June 1, 1999. However, as noted in para. 4.1 above, the Complainantís website refers to launching its business on September 9, 1999. The difference in dates is not material for the purposes of this Decision. The Complainantís website is www.mailmaniacs.com [Exhibits A and B to the Response].
The application for [December 14, 1998] and issue of [August 24,1999] the Complainantís US INTENT to use Mail Mania both post date registration on October 12, 1998, of the domain name in issue. Further, use of the Complainantís Mail Mania mark, be it June 1 or September 9, 1999, post dates use by the Respondent of the domain name in issue in the Fall of 1998.
4.4 The Response
This contains, inter alia, the following submissions.
4.5 Disputed Facts
The Complaint states:
"A representative for Competitive Advantage contacted MailMania.com during the Summer of 1999 to inform the Respondent of Competitive Advantageís rights in the Mail Mania mark and to request that the MailMania.com domain name registration be transferred to Competitive Advantage. MailMania.com demanded that it be paid $92,000 for the domain name and has refused to transfer the domain name to Competitive Advantage without the payment of such monies."
In this respect the Response states in para. 14
"King has never contacted the Complainant to offer to sell it the domain name. If there was any contact as alleged by the Complainant, (which is not admitted but is specifically denied) then it was by the Complainant contacting King."
The Panel does not find it necessary to make a ruling in relation to this conflict because of the bases upon which its Decision is based (see below).
5. Partiesí Contentions
A. The Complainant
The Complainant contends that the Respondent has registered as domain names a mark which is identical to or confusingly similar to the Complainantís Mail Mania mark, that the Respondent has no rights or legitimate interests in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith.
B. The Respondent
The Respondent asserts that it has both rights and a legitimate interest in respect of the domain name in issue and that such domain name was registered and is being used in good faith. For those reasons, the Complaint should be rejected as not meeting the requirements of para. 4a of the Policy.
6. Discussion and Findings
6.1 The Policy para. 4a provides that the Complainant must prove each of the following:
- that the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
The Complainantís US trade mark Mail Mania and the Respondentís domain name in issue MailMania.com are, to all intents and purposes, identical. Thus, the Complaint satisfies the requirements of para. 4a(i).
6.3 Rights or Legitimate Interests
Para. 4c of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondentís rights or legitimate interest for the purpose of para. 4a(ii). Those circumstances are that:
(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use the domain name or a domain name corresponding to the domain name, in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleading divert customers or to tarnish the trade mark or service mark at issue.
6.4 The Respondent has provided evidence that it was using the domain name in issue in connection with the bona fide offering of its Mail Mania secure mail server system in the Fall of 1998 before the Complainant began use of the Mail Mania trade mark in June (or September) 1999. Further, the domain name in issue continues to be used by the Respondentís licensee. There is no evidence that use of the domain name has been or is being used in violation of any applicable laws or regulations.
6.5 The Respondent cites a decision of the National Arbitration Forum [FA #002000093547] in CRS Technology Corporation .v. Condenet Inc concerning the domain name conceirge.com. CRS were the proprietors of a Canadian trademark registration for CONCIERGE in respect of computer software application interfaces using intelligent technologies which provide access to travel services. The application for the mark was made in May 1995 and registered in April 1998. In July 1999 Condenet set up a home page announcing its concierge.com service providing travel tips and advice, information on travel promotions, fare-finders, reviews of hotels, cruises and resorts, and other travel related topics. The Complaint was rejected and the Panel concluded [at para. 16 of the Decision]:
"Here, even though the trademark and name are all but identical, the Panel has determined that the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers."
6.6 Although that Decision is neither totally in point nor does it have any particular precedential value, it does in the above quoted reference express a view with which this Panel generally agrees. On a plain reading of the Policy, the Respondent has demonstrated both rights and legitimate interests in the domain name in issue. Further, the Complainant apparently trades using the domain name www.mailmaniacs.com and has produced no evidence of confusion with the Respondentís domain name in issue. The Complainant fails to meet the requirement of para. 4a(ii) of the Policy and as a consequence the Complaint fails in its entirety.
6.7 Bad Faith
It is, therefore, unnecessary to decide whether the domain name in issue was registered and is being used in bath faith [para. 4a(iii) of the Policy]. However, the Complaint totally fails to establish either. On the evidence before this Panel, the Complainant fails to satisfy any of the instances of registration and use in bad faith illustrated in para 4b of the Policy.
For all the forgoing reasons, the Panel decides that the Complainant has failed to prove two of the three elements of para. 4a of the Policy. Accordingly, the Panel denies the request that the registration of the domain name MailMania.com be transferred to the Complainant.
Jeffrey Samuels G Gervaise Davis III
Dated: May 30, 2000