WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Skramedart, Inc. v. Neologist, Inc.

Case No. D2000-1491

 

1. The Parties

The Complainant is Skramedart, Inc., a company incorporated under the laws of Ontario, Canada, with its head office and principal place of business located in Toronto. It is represented by Mr. Paul Tackaberry of Baker & McKenzie, Solicitors, Toronto, Ontario, Canada.

The Respondent is Neologist, Inc., of 5433 Westheimer Suite 620, Houston, Texas, United States.

 

2. The Domain Name and Registrar

The domain name in issue is "thesolutionpeople.com". The domain name is registered with Register.com, 575 8th Avenue Ė 11th Floor, New York, New York 10018, United States of America ("Register.com"). The domain name was registered on September 26, 1999.

 

3. Procedural History

The Complaint submitted by Skramedart, Inc. was received on October 31, 2000, by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On November 13, 2000, a request for Registrar verification was transmitted by the WIPO Center to Register.com, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with Register.com.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

Indicate the current status of the domain name.

By facsimile dated November 20, 2000, the Registrar advised WIPO Center as follows:

Register.com had received the Complaint sent by the Complainant.

Register.com is the Registrar of the domain name registration "thesolutionpeople.com".

The Respondent is shown as the "current registrant" of the domain name "thesolutionpeople.com". The Registrantís contact details are as above.

The administrative and billing contact is: Neologist, Inc., 5433 Westheimer Suite 620, Houston, TX 77056, United States of America.

The technical and zone contact is: Register.com, Domain Registrar, 575 8th Avenue Ė 11th Floor, New York, NY 10018, United States of America.

The Uniform Dispute Resolution Policy is applicable to "thesolutionpeople.com" domain name.

The domain name registration "thesolutionpeople.com" is in "Active" status.

The advice from Register.com that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with Register.com. Accordingly, the Respondent is bound by the provisions of Uniform Dispute Resolution Policy, i.e., the ICANN Policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on November 22 and 23, 2000, transmitted by post/courier, facsimile and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also sent by post/courier, facsimile and email to Register.com on November 22, 2000.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by December 12, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by an original and four sets in hard copy and by email. The Respondent failed to submit a Response in this matter and is in default. A Notification of Respondent Default was issued on December 15, 2000.

On January 11, 2001, the WIPO Center invited Andrew Brown, Barrister, of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On January 11, 2001, Andrew Brown advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On January 12, 2001, WIPO Center forwarded to Andrew Brown by courier and e-mail, the relevant submissions and the record. The electronic version was received by him on or about January 12, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by January 26, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is a Toronto based company that owns two trademark registrations (one in Canada and one in the United States) for the mark "THE SOLUTION PEOPLE" which relates to computer hardware and software and certain computer services. Details of the registrations are as follows:

Canada

Mark

Number

Date of Application

Goods

Services

THE SOLUTION PEOPLE

356,926

March 16, 1987

Computer hardware and software and instruction manuals, procedural guidelines and other written materials with respect thereto

Full range computer system services including, design, development, implementation, and maintenance of standard and customised computer system including, computer software and hardware and instruction manuals, procedural guidelines and other written materials with respect thereto, and the sale, leasing and marketing of computer systems

United States

Mark

Number

Date of Application

Class

Goods

THE SOLUTION PEOPLE

1,884,637

December 7, 1992

9

Computer hardware and software for the use in the portfolio, management and investment fields

     

37

Computer system services namely installation and maintenance of computer systems

     

42

Computer systems services namely design of computer systems for use in connection with portfolio, management and investment services

The US mark was first registered in the name of Just Systems (The Solution People), Inc., but was assigned, with all rights and interest, to the Complainant on October 30, 2000.

It appears that Just Systems (The Solution People), Inc. is now a licensee of the Complainant in both Canada and the US. The Complaint states that Just Systems is a provider of turnkey computer systems for use by members of the investment community such as investment counsel, mutual fund companies and mutual fund distributors. It appears from the Complaint and from the respective trademark registrations that use first began in Canada in 1985 and in the US in 1987.

The Complaint does not provide any examples of use of the mark. However the Panel is influenced by the fact that both the trademark registrations in both the US and Canada record first use in 1985 and 1987 respectively and that there has been continuous use by the Complainant or its licensee since those dates.

The Complainant registered the domain names "thesolutionpeople.net" and "thesolutionpeople.org" in May 2000.

The Respondent has not chosen to defend the Complaint or to provide any evidence of claim to the trademark "THE SOLUTION PEOPLE".

The evidence presented by the Complainant shows that the Respondent has registered hundreds of domain names and is advertising these for sale to the general public. The Respondentís own website "www.neologist.com" states that the domain names are priced starting at $5,000.

The Complaint states that while the Respondent is not currently offering for sale the domain name ""thesolutionpeople.com", it has done so in the past and that at various stages a page has appeared on the site which states:

"This Domain is for sale. Our Domains are priced starting at $5,000. If interested please contact Robyn at (713) 622 0064 or email sales@neologist.com".

 

5. Partiesí Contentions

The Complainant contends in summary:

(a) that by reason of longstanding continuous use of "THE SOLUTION PEOPLE" since 1985 by its predecessor in title and now licensee, this trademark has a distinctive quality and has acquired special and particular significance in identifying the Complainant;

(b) that the Respondentís domain name is identical to the Complainantís trademark and was registered on September 26, 1999, long after the Complainantís predecessor in title acquired rights in the mark;

(c) that the Respondent is a "classic domain name merchant who registers domain names for the sole purpose of later selling them for a profit". The Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate or fair use;

(d) the Respondentís registration of the domain name was in bad faith;

(e) the Complainant claims that as a matter of US trademark law, the Respondent had constructive notice of its US registration and either knew or should have known that its registration prevented the Complainant from registering a ".com" domain name. Because of the constructive notice provision in US trademark law, it is contended that the lack of actual knowledge is not a defence and that it is not necessary to find actual knowledge in order to conclude that the registration is in bad faith.

The Respondent has made no submissions.

 

6. Discussion and Policy

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

  • 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

  • That the Respondent has no rights or legitimate interests in respect of the domain name; and

  • That the domain name has been registered and is being used by the Respondent in bad faith.

    Domain name is identical to registered trademark

    The domain name "thesolutionpeople.com" is obviously identical to the Complainantís trademark in Canada and the US. The Panel so decides. It replicates the mark in its entirety. The addition of the .com is not meaningful, as it is non-descriptive and necessary in the creation of one type of top-level domain name.

    No legitimate rights or interest in "THE SOLUTION PEOPLE"

    The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

    (i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the 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 the Respondent has acquired no trademark 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 misleadingly divert consumers or to tarnish the trademark or service mark at issue.

    The Respondent in this case has not chosen to defend against the Complaint. But in any event there is no evidence that the Respondent could claim the benefit of any of the categories listed in paragraph 4(c) of the Policy or indeed show any prior bona fide use of the domain name. This has not been an active website and the only use of it has been occasionally to place a notice on the site that it is available for sale. The domain name is one of hundreds which the Respondent has available for purchase.

    The Panel has considered the decision in John Fairfax Publications Pty Limited v Domains 4U D2000-1403. There the Panel stated:

    "Since registering generic names, even with the intent to resell them as a legitimate business activity, the majority of the Panel holds that the Respondents have a legitimate interest in the contested domain name."

    In this case the facts are dissimilar. Although most of the other domain names available for purchase from the Respondent appear to be generic, this one is not a generic name. It is in fact identical to a trademark registered in both Canada and the United States and in continuous use since 1985 and 1987 respectively.

    Overall the Panel can find no evidence to demonstrate that the Respondent has legitimate interests in the domain name at issue. The Panel therefore finds that the Complainant has met the requirement in paragraph 4(a)(ii) of the Policy.

    Domain name has been registered and is being used in bad faith

    Paragraph 4(b) of the ICANN Policy states:

    "For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

    (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

    (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

    (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

    (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

    It should be noted that the circumstances of bad faith are not limited to the above.

    None of the specified categories of bad faith applies in this case. There is no evidence that the domain name is registered primarily for the purpose of selling to the Complainant or a competitor. Rather it seems that the Respondent registered the domain name as one of many hundreds and that the domain name is available to any person willing to pay the asking price.

    In relation to paragraph 4(b)(ii) of the Policy, there is certainly a pattern of conduct by the Respondent in registering domain names. The Complainant attaches as a schedule lists of these domain names. But there is no pattern of registering well-known trademarks as domain names. Most of the domain names held by the Respondent appear to be generic or generic type names for example "cakeshop.com", "canoepaddles.com", "localphysicians.com" and "schoolofmedicine.com". The Panel is therefore not able to place this case in the same category as those cases where there is a pattern of conduct of registering well-known third party trademarks Ė for example "Inter IKEA Systems BV v Technology Education Centre, D2000-0522" and "IndyMac Inc. v Financial Insurance Associates, D2000-0535".

    Nor is there evidence of registration for the purposes of disrupting the business of a competitor. The Respondent and Complainant are not competitors. Further there is no evidence of registration for the purposes of attracting internet users to the Respondentís website. For part of the time it appears that nothing has been placed on the website by the Respondent.

    However, the Panel finds that the Respondent has registered the domain name and is using it in bad faith for the following reasons in combination:

    (a) The evidence shows that the Respondent registered the domain name "thesolutionpeople.com" primarily for the purposes of selling it to a third party. It is one of many hundreds that the Respondent has available for sale and there is evidence that the website has from time to time carried a statement that the domain name at issue was available for sale. The website has never operated in any conventional sense.

    (b) The ICANN Uniform Domain Name Policy was adopted on August 26, 1999, approved by ICANN on October 24, 1999 and put in place by Register.com on December 1, 1999. The Policy states in clause 2 that by applying to register a domain name or by asking the registrar to maintain or renew a domain name registration, the domain name applicant (the Respondent):

    "Hereby represent and warrant to us that

    (a) the statements that you made in your Registration Agreement are complete and accurate;

    (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;

    (c) you are not registering the domain name for an unlawful purpose; and

    (d) you will not knowingly use the domain name in violation of any applicable rules or regulations.

    It is your responsibility to determine whether your domain name registration infringes or violates someone elseís rights."

    While this domain name was registered on September 26, 1999, before Register.com put the Policy in place but after its adoption by ICANN, it is clear from the terms of the Policy that it has retroactive effect and moreover applies as an ongoing obligation in circumstances where the registrar is being asked to maintain and/or renew the domain name.

    Putting it at its lowest, the Respondent certainly failed to check not only when registering the domain name, but also, subsequently, when the policy came into force that its domain name was not violating anotherís trademark. Had any such checks been done in the US and Canada at any stage from September 1999 onwards, the Complainantís rights would have been discovered. After all the Respondent is operating in the United States and offering domain names from that jurisdiction so it could properly be expected to check trademark registrations in its home territory of the US and Canada.

    As the Complainant points out, under US law the Complainant is also able to call in aid the principle that the Respondent had constructive notice of the Complainantís US trademark registration: 17 USC 1072.

    (In this regard, this case is different from John Fairfax Publications Pty Limited v Domains 4U Case D2000-1403, where a US Respondent acquired a domain name conflicting with a relatively descriptive Australian registered trademark or Vermögens Zentrum AG v Anything.com D2000-0527, where the marks of a financial services company in Switzerland and Germany would not have been known to domain name registrant in the Cayman Islands.)

    By failing to investigate third party rights in the US, the Respondent can be considered to have acted in bad faith in registering and maintaining the domain name: Collegetown Relocation LLC v John Mamminga (Nat Arb Forum FA95003); Slep-Tone Entertainment Corp v Sound Choice Disc Jockeys Inc. (Nat Arb. Forum FA93636).

    (c) Where the Respondent is looking to make a profit from the sale of a domain name in excess of its likely expenses in registering the domain name for sale to third parties and has many hundreds of domain names on its book, this reinforces the obligation on the Respondent to ensure that the domain names which it registers and intends offering for sale do not infringe a third partyís rights. The Respondentís own publicity on its website urges purchasers to choose the "right domain name. The one you choose should be distinct, memorable and easily associated with your companyís product, service, or image".

    The registration of a domain name which another partyís trademark will in most cases have the effect of preventing that trademark owner from reflecting its trademark in a website.

    (d) The Policy requires that the Respondent have registered and be using the domain name in bad faith. The fact that the domain name is available for sale has been taken as evidencing bad faith registration and absence of use in such circumstances has, since the decision (Telstra Corporation v Nuclear Marshmallows D2000-0003) been consistently found not to frustrate the requirement of showing bad faith registration and use. The concept of a domain name being used in bad faith is not limited to positive action: CUX, Inc. v DomainNamesAvailable D2000-0972.

    The Panel therefore concludes that the Complainantís claim that the domain name has been registered and is being used by the Respondent in bad faith has been made out.

     

    7. Decision

    For the foregoing reasons, the Panel decides:

    (a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

    (b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

    (c) the Respondentís domain name has been registered and is being used in bad faith.

    Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "thesolutionpeople.com" be transferred to the Complainant.

     


     

    Andrew Brown
    Presiding Panelist

    Dated: 24 January, 2001