WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vertical Computer Systems, Inc. v. Registrant of "pointmail.com"
Case No. D2001-0006
1. The Parties
The parties are Vertical Computer Systems, Inc., a California corporation having its principal place of business at 6336 Wilshire Blvd., Los Angeles, CA 90048 (Complainant) and the unidentified registrant of the Domain Name "pointmail.com" of 12131 Cheng Sa Road, Hong Kong, SAR China, 00100 (Respondent).
2. The Domain Name and Registrar
The Domain Name in dispute is "pointmail.com". The Registrar is Tucows Inc. ("Tucows").
3. Procedural History
The Complaint was filed on behalf of the Complainant by its attorneys, Lyon & Lyon LLP, with the WIPO Arbitration and Mediation Center ("the Center") by email on January 2, 2001 and in hard copy on January 4, 2001. By email of January 11, 2001, Tucows Inc. verified that it was the Registrar of the disputed Domain Name, that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the Domain Name and that it had received a copy of the Complaint. The Centerís Notification of Complaint and Commencement of Administrative Proceeding ("the Notification") records that the fee in the required amount had been duly paid. On a review of the file, the Panel concludes that the Complaint complied with the applicable formal requirements.
The Notification was sent by email (without exhibits) on January 15, 2001 to "firstname.lastname@example.org" and "email@example.com", the latter being the email address recorded by the Registrar for the Administrative, Technical and Billing Contacts. No return notification was received. A copy of the Complaint was also dispatched by courier (with exhibits) on January 15, 2001 to the postal address recorded by the Registrar for the Registrant and the Administrative, Technical and Billing Contacts (12131 Cheng Sa Road, Hong Kong, SAR China, 00100), but was returned to the Center on January 18, 2001.
On February 6, 2001, the Center sent Notification of Respondent Default by email to "firstname.lastname@example.org" and to "email@example.com". No return notification was received. No response to the Complaint has been received from the Respondent.
The Panel concludes that the Complaint was properly notified in accordance with paragraph 2(a) of the Rules.
The single member Panel, Jonathan Turner, submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on February 12, 2001. In accordance with paragraph 15 of the Rules, the Panel was required to forward its decision to the Center by February 26, 2001 in the absence of exceptional circumstances.
4. Factual Background
A Company called Pointmail.com, Inc. was incorporated on March 22, 2000, in California having a principal place of business in Los Angeles. It conducted initial research and development of software for providing, receiving, and storing e-mail. In June 2000, this company was acquired by the Complainant, which began marketing and promoting e-mail services provided by the software, and issued press releases about the acquisition. On or about July 14, 2000, the Complainant registered the Domain Name "pointmail.com" with Network Solutions Inc ("NSI"). The Complainant thereafter advertised its e-mail services and software on a website at "pointmail.com". On November 29, 2000, the Complainant filed trademark and service mark applications at the U.S. Patent and Trademark Office for the marks "Pointmail" and "pointmail.com". These applications have not yet been granted.
The Complainantís registration of the Domain Name "pointmail.com" was cancelled on October 24, 2000, as a result of a mistake or failure of communication between the Complainant and NSI. The Complainant was notified of the cancellation on November 1, 2000. In the meanwhile, an entity called HKASP registered the Domain Name with NSI on October 27, 2000. On November 2, 2000, the Complainantís attorneys wrote to HKASP at the address recorded on the NSI database, 10A 51 Conduit Road, Hong Kong, SAR 00100, requesting it to transfer or surrender the Domain Name. HKASP did not reply.
Shortly after this letter, the registration of the Domain Name was transferred from NSI to Tucows and the postal address in the contact information was changed to 12131 Cheng Sa Road, Hong Kong, SAR, 00100, China. However, the telephone number (+41-243-2322) and e-mail address ("AWXYZB3@hotmail.com") given for the administrative, technical and billing contacts remained the same, as did the IP addresses of the domain servers ("nsi.granitecanyon.com" and "nsz.granitecanyon.com"). The Tucows registration did not provide any name of the registrant or contacts other than "webmaster". On November 9, 2000, the Complainantís attorneys sent a copy of its November 2, 2000, letter to the postal address listed in the Tucowsí database. The letter was returned as undeliverable because the address was incorrect or incomplete.
The Respondent posted a website at "pointmail.com" stating that the Domain Name was for sale. A link was provided to a Domain Name auction site at "afternic.com" where "pointmail.com" was listed as for sale to the highest bidder, subject to a minimum of $5,000, with an indication that it is a "good name for free email that allows members to earn points".
5. Partiesí Contentions
The Complainant contends that the Domain Name is confusingly similar to the names "Pointmail" and "pointmail.com" in which it has trade mark rights; that since the Respondent is offering the name for sale, it clearly has no rights or legitimate interest in using it; and that the changes in the registration constitute an unsuccessful attempt to disguise the Respondentís identity, and this is indicative of bad faith.
The Respondent has not submitted a response to these contentions.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
As to the first requirement, the Complainant does not have any relevant registered trademarks. It has applied to register "Pointmail" and "pointmail.com" as trade marks in the United States but these applications have not as yet resulted in the grant of registered trademark rights.
The Panel accepts that a Complainant may rely on rights in unregistered marks in accordance with the decisions under the Policy in "juliaroberts.com" and "jeanettewinterson.com/org/net". Whether such rights exist must be assessed by reference to a legal system in which they may be recognized. In this case, the Complainant and Pointmail.com, Inc. are located in California and the Complainant accepts that its marketing and promotional efforts have been focused in California. It appears that the Complainant is in a position to claim trademark rights only under Californian State Law and US Federal Law. Furthermore, under paragraph 15(a) of the ICANN Rules for the Uniform Domain Name Dispute Resolution Policy, the Panel shall decide a Complaint on the basis of any rules and principles of law that it deems applicable. The Panel considers that in the circumstances of this case it should apply Californian State and US Federal Law to determine whether the Complainant has rights in the unregistered trade marks "Pointmail" and "pointmail.com".
The Panel finds that, under the laws of California and the United States, a person cannot acquire rights in a mark which is generic, and can only acquire rights in a mark which is descriptive by showing secondary meaning: see e.g. Abercrombie & Fitch v Hunting World 537 F2d 4 (CA2 1976), Park ní Fly v Dollar Park & Fly 469 US 189 (1985), Two Pesos v Taco Cabana 505 US 763 (1992), Kendall-Jackson v E&J Gallo (CA9 1998).
The Panel considers that the names "pointmail" and "pointmail.com" are descriptive. More precisely, they are the simple conjunction of the descriptive word "point" with the generic word "mail" and (in the case of the latter) the gTLD suffix. The names are apt to describe the provision of email services in which users earn points. They are of a similar character to other Domain Names which Pointmail.com, Inc. registered, such as "advanceemail.com", "consumeremail.com" and "getpaidmail.com".
The Complaint refers to the press releases issued by the Complainant on its acquisition of Pointmail.com, Inc. and to the advertisement of its services and software for a limited period on its website at "pointmail.com". However, the Complaint does not contain evidence that this limited promotion has given the names a secondary meaning signifying the Complainant in the mind of the public. The Panel concludes that the Complainant has not proved that it has rights in the relevant marks.
As to the second requirement, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name. Its only use for the Domain Name is offering it for sale.
As to the third requirement, the Panel is not persuaded that the Domain Name was registered and is being used in bad faith. The evidence is consistent with the possibility that the Respondent registered the Domain Name when it became available because of its value as a descriptive name. The change of Registrar and postal address and the failure to identify the Respondent in the registration following the Complainantís attorneysí letter is not necessarily attributable to a desire to conceal, but even if it is, this does not show bad faith of the kind envisaged by the Policy.
The examples of evidence of bad faith set out in paragraph 4(b) of the Policy all contemplate that the Respondent was aiming at the Complainant. Specifically, the reference to registration or acquisition primarily for the purpose of sale is limited to sale to the Complainant or a competitor of the Complainant. The Policy appears to assume that profiting from trade in descriptive names is not in itself to be regarded as bad faith. This view is supported by decisions under the Policy in "Craftwork.com" and "Justforkids.com". The Panel concludes that the Complainant has not proved that the Domain Name "pointmail.com" has been registered and is being used in bad faith.
The Panel decides that the Complaint should be rejected.
Dated: February 22, 2001