WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Network Associates Technology, Inc. v. Lenow International, Inc.
Case No. DBIZ2001-00043
1. The Parties
The Complainant is Network Associates Technology, Inc., a Delaware corporation with its principal place of business in Santa Clara, California, USA.
The Respondent is Lenow International, Inc., a Tennessee corporation with its principal place of business in Memphis, Tennessee, USA.
2. The Domain Name and Registrar
The domain name at issue is: <cybercop.biz> (the "Domain Name") and the registrar is Register.com.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") via email on December 14, 2001 and in hard copy on December 18, 2001. The Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to Respondent on December 23, 2001. On January 12, 2002, the Respondent filed a Response.
On February 15, 2002, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Single Panelist.
4. Factual Background
The Complainant and its predecessors adopted and have been using the mark CYBERCOP since 1997 in connection with computer software and hardware for network security, and for detection of intrusions into computer networks, systems and applications.
On February 28, 1997, Complainant filed an application with the United States Patent and Trademark Office (USPTO) to register the mark CYBERCOP. Complainant received its federal registration of CYBERCOP for "computer software and hardware for network security, for detection of intrusions into computer networks, systems, and applications," on August 17, 1999. The registration claims first use of the mark in August 1997.
Complainant also holds a Mexican and Australian registration for the CYBERCOP mark.
Respondent is a licensed private investigation agency in the State of Tennessee, and provides, as part of its services, "investigations within the online environment or what is commonly called cyberspace." Respondent started developing this on-line investigative specialty in 1989.
On November, 19, 2001, Respondent registered the Domain Name <cybercop.biz> with Register.com.
5. The Parties' Contentions
The Complainant contends that the Domain Name <cybercop.biz> is identical to Complainant's registered mark CYBERCOP. Complainant also asserts that Respondent has no rights or legitimate interests in the Domain Name because: (i) Respondent has not used the Domain Name in connection with a bona fide offering of goods or services; (ii) Respondent is not making a legitimate non-commercial or fair use of the Domain Name; and (iii) Respondent has never been commonly known by the Domain Name.
Finally, Complainant contends that Respondent registered the Domain Name in bad faith because it registered the Domain Name in order to prevent Complainant from reflecting the CYBERCOP mark in a corresponding domain name, and/or Respondent has registered the Domain Name primarily to disrupt the business of a competitor (Complainant).
Respondent contends that, despite Complainant's federal registration of the mark, CYBERCOP is a term of the "common vernacular" that was derived to define investigators who conduct investigations in cyberspace. As such, Respondent asserts that, as a provider of specialized cyberspace investigative services, it intends to use the term CYBERCOP to explain its services to potential clients.
Respondent also contends that it did not register the Domain Name in bad faith. As evidence of its good faith registration, Respondent asserts that it was not aware of Complainant's rights in CYBERCOP before Respondent received the Complaint.
Further, Respondent contends that there are no similarities between the Complainant's products and services offered under the CYBERCOP mark and Respondent's use of the term CYBERCOP to describe its specialized investigative services.
Finally, Respondent contends that it has not made use of the Domain Name because Respondent received the Complaint shortly after it registered the Domain Name, and Respondent has no plans to use the Domain Name until the dispute at issue is resolved.
6. Discussion and Panel Findings
Our inquiry focuses on three issues: (1) is the Domain Name identical to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Name; and (3) has the Domain Name been registered or used in bad faith? In order to be successful, the Complainant has the burden of proof on each of these issues.
A. The Domain Name is identical to Complainant's trademark
The dispute Domain Name is <cybercop.biz>. The Complainant owns a prior federal trademark registration in the United States for the word "CYBERCOP."
The .biz gTLD is not a distinguishing feature. Therefore, it is obvious that the Domain Name is identical to a trademark in which the Complainant has rights.
B. The Respondent has no rights or legitimate interests in the Domain Name
Paragraph 4(c) of STOP lists a number of circumstances, under which a Respondent can be found to have rights or a legitimate interest in a disputed domain name. None of those circumstances are present in this case.
Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, and has not shown any demonstrable preparation to make such use. Nor has Respondent engaged in a noncommercial or fair use of the Domain Name. Finally, there is no evidence in the record that Respondent has never been commonly known by the Domain Name.
C. The Domain Name was not registered or used in bad faith
Under Paragraph 4(c)(iii) of STOP, the Complainant must demonstrate that the Respondent registered or used the Domain Name in bad faith. The record shows that Respondent has not used the Domain Name in any manner. Although passive holding of a Domain Name could, under certain circumstances, amount to bad faith use, here Respondent has only held the Domain Name for a few months. That brief passive holding in this instance does not amount to bad faith use. Therefore, our inquiry must focus on the registration of the Domain Name.
To show bad faith registration by the Respondent, the Complainant asserts that the Domain Name was registered for the purpose of preventing Complainant from reflecting the CYBERCOP mark in a corresponding domain name, and/or primarily to disrupt the business of Complainant. Complainant has the burden of proof on these issues.
I do not believe the record supports either contention. Respondent has shown that it has long been in business as a private detective. He started an online computer network for private investigators in 1989. By 2001 he was promoting a "specialty of conducting investigations within the online environment of what is commonly called 'cyberspace.'" Respondent has also shown that the term "CYBERCOP" was in use in the media and investigation industry at least as early as 1995, two years prior to Complainant's first use.
When Respondent selected the Domain Name, he necessarily had constructive notice as a matter of law of Complainant's existing federal registration of CYBERCOP for "computer software and hardware for network security . . ." That notice, however, does not necessarily establish bad faith. Given the differences in goods and services, Respondent may have selected CYBERCOP without intent to infringe a competitor's prior rights.
I recognize, of course, that trademark infringement does not require direct competition or identical goods and services. STOP, however, is not designed to provide relief in ordinary cases of trademark infringement. Instead, STOP appears limited to willful acts of cybersquatting or infringement. This limitation is appropriate because the typical infringement action involves consideration of evidence on a variety of factors and is not well suited in most instances to the summary nature of these proceedings, especially where, as here, the Respondent is not actually making use of the Domain Name and there are differences in the nature of the prospective goods and services involved.
In this case, I believe the preponderance of evidence indicates that Respondent did not register the Domain Name in bad faith. Instead, it appears more likely than not that Respondent registered the Domain Name in good faith as an apt choice for use in connection with his private investigation services. It does not appear that Respondent did so with the intent of selling the Domain Name for profit, preventing Complainant from reflecting its mark in the .biz domain, disrupting the business of a competitor or infringing Complainant's rights. In short, there is nothing to indicate that Respondent is a cybersquatter.
In reaching this conclusion, I take no position on whether or not Respondent's actual use of CYBERCOP for investigation services might infringe Complainant's trademark rights in CYBERCOP for computer software and hardware related to security. As noted above, that issue is outside the scope of this proceeding.
Complainant has not met its burden of proving that the Domain Name was registered or used in bad faith. Therefore, I find in favor of Respondent.
Mark V.B. Partridge
Dated: February 21, 2002