WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ascendes Corporation dba MarketTouch v. Market Touch Limited
Case No. D2001-1186
1. The Parties
The Complainant is Ascendes Corporation dba Market Touch (Ascendes). It is a company incorporated in Georgia, United States of America. Its principal place of business is in Alpharetta, Georgia, USA. It is represented by James C Dekle, its president.
The Respondent is identified as Market Touch Limited. Its emails give its name as Oy Market Touch Limited. Its details are given according to the Register.Com Inc Whois database as Market Touch Limited of Paimenhuilunpolku 8, Helsinki 00420, Finland. It is represented by its Registrar contact person Esko Haavisto.
2. The Domain Name and Registrar
The domain name the subject of the dispute is <markettouch.net>.
The Registrar with which the domain name is registered is Register.com Inc of 575 Eighth Avenue, 11th Floor, New York, NY 10018, United States.
The date on which the disputed domain name was registered by the Respondent is shown on the Whois database search as May 8, 2001.
3. Procedural History
On September 28, 2001, the Complaint was received by email.
On October 4, 2001, Registrar Verification was requested.
On October 4, 2001, the Registrar responded to the request.
On October 24, 2001, a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.
On November 15, 2001, a Respondent Default Notification was issued.
On November 17, 2001, the Respondent filed by email a brief Response. On December 5, 2001, the Respondent forwarded by email a further Response. On December 7, 2001, the Complainant forwarded by email a brief reply.
On December 12, 2001, a Notification of Appointment of Administrative Panel and projected decision date was notified.
The Rules for the UDRP set out clear and fixed timetables for a Respondent's reply. To these Rules the Respondent agrees to be bound when registering a domain name with an accredited domain name registrar. Supplemental filings are not generally provided for but may be allowed by the Panelist in his or her discretion.
In circumstances such as this, it would not be appropriate to treat the Respondent's Response as a supplementary filing. Rather it is its only Response. To that Response the Complainant has replied. In the interests of justice and for the reasons to be elaborated upon further below it would in the Panelist's view be wrong to shut out the Respondent's email Responses and the Complainant's reply. They have therefore in the exercise of the Panelist's discretion, been considered.
The Panel having accepted the appointment and having considered the papers including the Respondent's Response and the Complainant's reply thereto, delivers the following administrative panel decision.
4. Factual Background
Ascendes is a Georgia, United States, corporation. It describes itself as doing business as MarketTouch. Its address is given as 1235, Old Alpharetta Road, Suite 100, Alpharetta, Georgia, 30005, United States.
Little information is given in the Complaint document itself about Ascendes. Its background, trading history, precise business activities, customers base and usual CV information is lacking.
It is the registered proprietor of a trademark MARKETTOUCH registered in the United States in class 26 for "brokerage services in the field of marketing of data to others". It is stated in the copy of the Register Sheet (which is not an official copy) to have been in use since late 1995. It acceded to registration as a trademark in July 2000, but dates retrospectively to its filing in May 1997 (see annex D).
Whilst the formal part of the Complaint tells little about Ascendes, some factual material can be gleaned from Part V of the Complaint and the Attorney correspondence which is exhibited (see annexes E, F, H and I). But even that, it is apparent, is incomplete. It appears that for perhaps a year from May 1998 to May 1999, one Dan McDonald (various spelled MacDonald and McDonald etc) was employed by Ascendes although in what capacity and for what purposes is unstated.
Ascendes apparently also has its own domain name <markettouch.com> which is linked to a website marketing Ascendes Markettouch Services. None of this is clearly put in evidence by Ascendes.
The Respondent is shown in the Register.com Whois database as a Finnish company, the correct style of which is either MarketTouch Limited or Oy Market Touch Limited of Helsinki Finland. The Complaint gives little detail about the Respondent beyond that discerned from the registration details of its domain name and the disputed domain <markettouch.net>.
Based on the late Response from the Respondent it appears to be a Finnish company incorporated there in or about 1995. It is stated that it carried out commercial research activities in the Netherlands already in 1989. It has an affiliate office in Florida.
It appears to have decided to register a domain name incorporating the Market Touch name, either as a single or double word, in about July 2000, but encountered difficulty in that the domain <market-touch.com> was already owned by a Californian company. That company however was contemplating a change of name and indicated a willingness to sell the domain name to the Respondent. That company, based in California, is not related to the present Complainant.
It is not stated whether the Respondent has been known as and carried on business under the style Market Touch Limited since 1995. It is assumed that that is the case. It appears in 2000, to have had a website <market-touch.org> and an email address of <market-touch.inet.fi> (see late email Response from Respondent).
5. The Parties' Contentions
Ascendes is the owner of certain US trademarks. In its Complaint and in the annexures it has referred to certain trademarks which are commented upon separately below.
The Complaint tells nothing specific of Ascendes' actual business. Its turnover is not stated. Its profile or business is not stated. No indication of staff numbers, where they are based, what they do, is given. How widespread across the United States or beyond Ascendes' business is, what reputation and goodwill exists, what marketing and advertising is carried out is unstated.
The claim by Ascendes is based on the trade marks as protecting Ascendes' rights to the exclusive use of those marks or any confusingly similar mark in connection with the goods or services to which the registrations relate (see Complaint page 6).
Ascendes alleges that the disputed domain name <markettouch.net> is confusingly similar to its registered trademarks for MARKETTOUCH. It is also alleged that the disputed domain is confusingly similar to two domain names owned by Ascendes being <markettouch.com> and <market-touch.cc>, the former having been owned and used by Ascendes since April 1997.
Ascendes claims that the Respondent, whilst having a similar company name to the disputed domain, obtained the disputed domain name from its former owner Marketing Solutions Now Inc, a Roswell, Georgia, United States, corporation on May 8, 2001, after the disputed domain name was established. The domain name was originally registered on March 8, 2000.
In support of its contention, Ascendes claims that the earlier mentioned Dan McDonald left Ascendes' employ in 1999. At the time he left Mr. McDonald was actively seeking to poach business from Ascendes by setting up a competing business selling similar products or services in the same industries as Ascendes. The Attorney correspondence is relied upon, particularly that in 2001, wherein Ascendes' attorneys took issue with MSNI's registration of the disputed domain name the year before and sought its transfer to Ascendes. The first letter, of April 25, 2001, was sent to "Dan McDonald, Registered Agent, Marketing Solutions Now Inc" of Rosswell, Georgia (see Annex F). On May 1, 2001, an attorney replied "on behalf of my clients" a reference to the entitling to that letter which refers to "my clients: Dan T McDonald and MSNI". Whilst unlawful action is denied, it is acknowledged in the letter that Mr. McDonald had earlier begun "the process of transferring the domain name to another entity" (see annex I). Ascendes' attorneys replied on May 14, 2001, (see Annex H) and repeated their earlier claims.
Based on this, Ascendes claims that MSNI/Mr. McDonald registered the disputed domain in March 2000, after the original attorneys' correspondence in 1999 and then, after the further attorneys' correspondence in 2001, refused to transfer it to Ascendes. Instead, MSNI or Mr. McDonald, with full knowledge of the claims being made by Ascendes, then transferred the disputed domain in May 2001, to the present Respondent.
Although MSNI had originally linked the domain name to MSNI's own website, consequent upon the transferal of the domain to the present Respondent that link was discontinued.
Ascendes claims that MSNI had no legitimate claim to the disputed domain. It was not known as and did not trade under or by reference to the mark MARKET TOUCH. Its actions were solely caused to be prejudicial to Ascendes and prevented from acquiring for itself the same domain name. It is alleged that it was a further endeavour on the part of Mr. McDonald to poach business from Ascendes.
Ascendes then says that the present Respondent does not use the disputed domain.
The Respondent has filed a late but very brief series of email Responses. It contends that it has carried out commercial research activities in the Netherlands in 1989, and was registered as a company in Finland in 1995, with a wide range of activities. These are not particularised nor are they supported by any evidence.
The Respondent was unable to register <market-touch.com> so registered <market-touch.net> so as to be able to have a domain name for the company.
In July 2000, it entered into email correspondence with a Californian company (unconnected with the Complainant) which had the domain name <market-touch.com>. The Respondent's attempts seemed initially to be likely to lead to success in acquiring that domain name from the Californian company. That company offered to consider selling the domain for between US $9,000 and US $12,000. The Californian company responded to the queries raised by the Respondent and asked if the Respondent was interested in purchasing the URL and then the Californian company would proceed to change its own name registration in California. The Respondent has not provided any evidence of what happened after the email traffic in evidence. What became of the inquiry is not known.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has defaulted and initially placed no evidence nor any submissions before the Panel. It did provide a late reply which has been considered.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to the first ground, Ascendes alleges that the Respondent's domain name is confusingly similar to a trademark in which Ascendes, as Complainant, has rights. It also relies upon its primary domain name <markettouch.com>.
There can be no doubt that the domain name <markettouch.net> is confusingly similar to both the trademark MARKET TOUCH (whether as a registered mark or a common law mark) and the domain name <markettouch.com>.
It still remains however for the Complainant to show that it has rights the trademark MARKET TOUCH.
The evidence from the Complainant relating to its trade mark rights is at times unsatisfactory. For example, annex C of the Complaint is a print-out of the trade mark registration for MARKETTOUCH, but not in an official version. It appears that the Complainant has registered trademarks which cover three classes variously for goods and services, being classes 35, 36 and 42 in the international classification system. Nonewithstanding the inaccuracy as to the evidence of the trade mark registration for MARKETTOUCH, it seems from the evidence that the Complainant has established common law rights in the trade mark MARKET TOUCH.
Accordingly, ground (i) of paragraph 4(a) of the Policy is made out.
The second ground requires the Complainant to establish that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
Here, the Complainant is in difficulty. The Rule requires that the Complainant establish that the Respondent has no rights to the disputed domain. What seems relatively clear in this case is that when MSNI/Mr. McDonald registered the domain name in May 2000, neither of them had any rights whatever to the domain name <markettouch.net>.
Were MSNI or Mr. McDonald still the proprietor or agent of the proprietor the Complainant would have made out its case under Ground (ii). But MSNI is not the Respondent. The Respondent is Market Touch Ltd. of Helsinki, Finland. The Complaint must show that that company has no rights to the domain.
Of the various matters that could be relied upon by the Respondent in defence of its registration or acquisition of registration, there is just sufficient to show that the present Respondent may well have carried on business under or by reference to the name Market Touch (whether as one word or two) for some time and certainly sufficiently to give it what in most common law jurisdictions is described as an own name defence and also honest concurrent user rights. It is also noted that in 2000, it corresponded with the Californian company by email using the email address <market-touch.inet.fi>.
It may be that the transfer of the disputed domain by MSNI/Mr. McDonald in or about May 2001, (admitted in the attorney's letter) was in bad faith and to thwart Ascendes or even pre-empt what Ascendes might do, including the taking of this Complaint.
However, absent any evidence at all of implication by the Respondent in that complicity, it would be quite wrong to make findings that the Respondent was a party to any wrongdoing by MSNI/Mr. McDonald. It must be remembered that these Complaints are determined on the basis of the evidence the parties themselves choose to put before the Panelist. It is not an inquisitorial system. Nor is the evidence readily able to be tried and tested in a conventional way. There is no submission to any process of cross examination. Moreover, it must be remembered that the Complaint procedure is not in substitution for ordinary civil court remedies. They are left fully intact. It may well be that in an ordinary civil action with the full range of discovery available to it, Ascendes can fill in any factual lacunae. Accordingly, on the basis of the evidence before the Panelist, ground (ii) is not made out.
Although it is not necessary to deal with ground (iii), for the sake of completeness, the Panelist now proceeds to do so.
The third ground requires the Complainant to establish that the domain name has been registered and is being used by the Respondent in bad faith. Again, were it the case that MSNI/Mr. McDonald still remained the registered proprietor or agent of the proprietor of the disputed domain, it would likely follow that ground (iii) would be made out. But that is not the case here.
The Respondent acquired the disputed domain on May 8, 2001, on transfer to it from MSNI. That date however must be the date at which the question has to be determined whether this Respondent had acquired and was using the disputed domain in bad faith.
Again, absent any evidence of complicity by this Respondent in the actions of MSNI/Mr. McDonald in the transferal to and acquisition by the Respondent of the disputed domain, it would be wrong to impute bad faith to the Respondent.
Accordingly ground (iii) is not made.
For the reasons set out above the Panel finds that the Complaint is denied.
Accordingly, pursuant to clause 4(i) of the Policy, the Panel does not require that the registration of the domain name <markettouch.net> be transferred to the Complainant.
John Katz QC
Dated: January 14, 2002