WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gordano Limited v. NT mail server
Case No. D2002-0277
1. The Parties
The Complainant is Gordano Limited, a company registered in England, with its principal place of business at 18 Kenn Road, Clevedon, North Somerset, BS21 6EL, United Kingdom. The Complainant is represented by Mr. John Stanners.
The Respondent is NT mail server, which is located at #535-425 Carrall Street, Vancouver, BC V5Y2B4, Canada. The Respondent is represented by Ari Goldberger Esq., of ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <ntmailserver.com>.
The Registrar with which the disputed domain name is registered is Network Solutions, Inc., Dulles, VA, United States of America.
3. Procedural History
On March 27, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") via email for decision in accordance with the Uniform for Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, as well as the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The hardcopy of the Complaint was received on April 5, 2002.
On March 28, 2002, the Registrar responded to a request for verification of the disputed domain name <ntmailserver.com> confirming:
h The details of the Respondent
h That the Policy applied to the disputed domain name
h That the Respondent was the current registrant of the disputed domain name
h That the status of the disputed domain name was "active"
h That the language of the service agreement was English.
On April 4, 2002, the WIPO Center requested that the Complainant file an Amendment to the Complaint, as the Complaint as originally filed did not correctly identify the Respondent. The Amended Complaint (hereafter referred to as "the Complaint") was received via email on April 5, 2002, and in hard copy on April 9, 2002.
On April 11, 2002, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days; i.e., by May 1, 2002.
On May 1, 2002, a Response was received from the Respondent.
On June 6, 2002, the WIPO Center advised the parties that an Administrative Panel had been appointed, consisting of a three member Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules and of the Supplemental Rules.
4. Factual Background
The Complainant produces and supplies a product known as "NTMail". NTMail is a mail server for the Internet that runs on the Windows NT platform.
The Respondent operates an Internet hosting business called Corporate Web Solutions, founded in 1997. It specialises in NT Web Hosting services.
On March 2, 1998, the Respondent registered the disputed domain name. Initially, the Respondent used the site to promote a product known as Imail. Subsequently, the Respondent approached other vendors of NT mail server software about carrying their products on the website and signed up another vendor, MVIMail.
In June 1998, the Respondent contacted the Complainant. It informed the Complainant that it operated a site dedicated to NT mail services, which would promote the products of multiple vendors.
On August 19, 1998, the Complainant entered into a "Memorandum of Understanding for NTMail & NTList" appointing the Respondent as an authorised reseller for the Complainantís products. A copy of the Memorandum of Understanding was annexed to the Response.
The Complainant formally ranked the Respondent (via group email and its newsletter, Gordano Channel News) as its fifth best reseller for the period between November and December 2000, and its third best reseller for the fourth quarter of 2000.
The Complainant also provides a link on its website to the Respondentís website, stating "NTMAILSERVER.COM, Mail Server Purchases, Trial and Information!".
On December 4, 2001, the Complainant sent a letter to the Respondent complaining that the vendor of another NT mail server was being featured on the Respondentís front page website position. In this letter, the Complainant demanded that the Respondent either sell the disputed domain name for $2,000, or alter its website to promote only the Complainantís products. A copy of this letter dated December 4, 2001, was annexed to the Response.
5. Partiesí Contentions
A. The Complainant
The Complainant claims that extensive advertising and PR campaigns since 1994 have established its product NTMail as one of the premier messaging solutions available for the Windows NT platform. It states that its NTMail product has received many awards and has been highly recommended by industry analysts and journals such as PC Magazine, IT Week, PC Plus and Secure Computing.
The Complainant has registered copyright in its NTMail software program in the United States of America.
The Complainant claims that the product NTMail is commonly referred to as "NTMail Server". It states that in virtually all IT journals and business press, the Complainantís messaging server has been referred to as "NTMail Server" and that the term "NTMail Server" is inextricably linked with the product "NTMail". The Complainant provided evidence of a number of instances in which its NTMail product has been referred to as NTMail Server.
The Complainant claims that the Respondent has no rights or legitimate interest in respect of the disputed domain name. It claims that the Respondent is "using the well-known brand name of NTMail to gain new customers at the expense of [the Complainant]."
The Complainant states that the primary software offered for sale on the Respondentís website is Imail server from Ipswitch software and that potential customers have been confused into purchasing Imail under the impression that they were buying NTMail. The Complainant alleges that as a result, it has had people calling it asking for support for the NTMail server they thought they had purchased when in fact they had purchased an Imail mail server.
The Complainant also claims that the disputed domain name was registered in bad faith. It states that it has developed a reputation over eight years by being at the forefront of development of mail server software and that the Respondent is devaluing the good name of both "NTMail" and the Complainant by using the name "NTMail" to sell other mail server software.
The Complainant claims that the Respondentís use of the disputed domain name is an attempt by the Respondent to draw potential customers away from the Complainantís own sites and entice them to the Respondentís site.
B. The Respondent
The Respondent claims that the Complainant does not have trademark rights under the Policy for the mark "NTMAIL". The Respondent notes that it is common ground that the Complainant has no trademark registrations for the mark.
The Respondent also claims that the term "NTMail" and "NTMail Server" are common generic terms. The Respondent annexed a <google.com> search for the term "NTMail Server" excluding the Complainantís name and annexed the first 40 search results to the Response. It claims that the search yielded "thousands" of third party web pages containing the term "NTMail Server". The Respondent states that other companies besides the Complainant sell mail servers for the Windows NT platform and it provided evidence of these.
The Respondent claims that since 1998, it has generated approximately $138,000 in sales for the Complainant and that during this period, the Complainant has complimented the Respondent on its sales performance. The Respondent annexed to its Response an email from the Complainant stating "May I say I am very pleased with the substantial orders that you have put through the account, and your continued enthusiasm and dedication to increase the sales is much appreciated".
The Respondent states that as recently as April 2002 (i.e. after the filing of the Complaint), the Complainant formally recognized the Respondent as one of the "Top Ten Gordano Resellers for Quarter 1 2002". It states that the Complainant has issued commission payments and advice of credits over the past three years, and has continued to do so as recently as April 10, 2002, also after the filing of the Complaint.
The Respondent claims that it expressly advised the Complainant as early as June 1998 that the premium front-page position on its website would "rotate between all companies products that are represented". The Respondent annexed an email from the Respondent dated June 9, 1998, evidencing this claim.
The Respondent points out that the disputed domain name was registered on March 2, 1998. The first complaint made by the Complainant about the registration and use of the disputed domain name was its letter of December 4, 2001, almost four years after the disputed domain name was registered.
Plainly, the Complainant had knowledge of the Respondentís registration of the disputed domain name during that four-year period. The Respondent claims that with such a long period of time elapsing, and with the Complainant having consented to, endorsed and benefited from, the Respondentís ownership of the disputed domain name, the Panel should hold that the Complainantís claim are barred by the doctrine of laches.
The Respondent states that it has a legitimate interest in the disputed domain name. It states that the use of a descriptive domain name for a related website constitutes use in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.
The Respondent also states that it has a legitimate interest in the disputed domain name, as it is an authorized reseller of the Complainantís NTMail software product. The Complainant entered into an agreement with the Respondent dated August 19, 1998, under which it expressly authorized the Respondent to sell its products. The Respondent has sold the Complainantís NTMail products for over three years, and the Complainant has paid the Respondent fees in connection with this.
The Respondent states that a legitimate interest in a domain name has been established in cases where a respondent sells goods in connection with the disputed domain name as an authorized reseller even where the disputed domain name wholly incorporates a complainantís registered trademark. The Respondent provided a number of authorities in support of this proposition.
The Respondent also cited cases which support the proposition that even where a respondent is not an authorized reseller, the sale of goods via a disputed domain name containing a complainantís mark can establish a respondentís legitimate interest in that domain name.
The Respondent states that the Complainant has obviously consented to the Respondentís activities (including the registration and use of the disputed domain name) by:
(a) prominently featuring a link to the Respondentís website on its website at <http://www.gordano.com/find_channel/canada/index.htm>;
(b) paying the Respondent a share of revenues in connection with the sale of the Complainantís products through the Respondentís website; and
(c) formally recognizing the Respondent as a "Top Ten" reseller of its products on multiple occasions.
The Respondent claims that there is no evidence that the disputed domain name was registered and is being used in bad faith.
Finally, the Respondent submits that this is a case of Reverse Domain Name Hijacking. It claims that the Complaint "grossly misrepresents" the facts and intentionally leaves out crucial information such as:
(a) the fact that the Respondent has been an authorized reseller of the Complainantís software for three years;
(b) the Respondentís record of being a regular "Top Ten" reseller of the Complainantís software;
(c) the Complainantís "unconscionable attempts" to strong arm the Respondent into either surrounding the disputed domain name for $2,000 or removing references to the Complainantís competitors from its website.
The Respondent states that the Complainant should have known that there was no basis for the Complaint because of the generic nature of the terms "NTMail" and "NTMail server". Also, the Complainant only brought the case after it was unable to purchase the disputed domain name for $2,000.
6. Discussion and Findings
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 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 Complainants have 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 confusingly similar or identical to a trademark or service mark in which the Complainants have rights
It appears to be common ground that the Complainant sells a product called "NTMail" (sometimes referred to NTMail Server), but has not registered the trademarks "NTMAIL" or "NTMAIL SERVER". Neither has it produced evidence of any pending applications.
The Policy applies to unregistered trademarks as well as registered trademarks. However, where there is reliance on an unregistered trademark it is incumbent on a Complainant to provide sufficiently strong and compelling evidence of rights and reputation in the mark such that this is strongly associated and identified with the Complainant. This proof is even more necessary where the mark contains or comprises generic or descriptive terms.
In this case, the Respondent has provided strong submissions (and evidence) that the marks NTMAIL and NTMAIL SERVER are descriptive at best, and are used in a descriptive or generic sense by consumers. These submissions include dictionary definitions for the individual terms and individual news group entries, in which the writers have used the terms in a descriptive or possibly generic sense.
This Panel does not find, however, that the term "NTMAIL" is generic. In order for the term to be generic, its principal significance to the public must be as the name of an article. 2 McCarthy on Trademarks, ß 12:6 (2001). Under UK law (which is the law of the domicile of the Complainant) a trademark is not registrable if it consists "exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade": Kerly ĎLaw of Trade Marks and Trade Namesí (13th edition) para 7.79 Ė 7.82. Respondentís dictionary definitions do not assess the genericness of the term "NTMAIL", but instead appear directed to the wording of the Respondentís domain name, namely, MAILSERVER. In particular, <dictionary.com> Ė the very source the Registrant cites for the proposition that "mail server" is generic, has no definition for the term NTMAIL; <dictionary.com>ís definition of NT refers to WINDOWS NT and its definition of "MAIL" refers to e-mail. The Respondentís evidence of third party use of the term NTMAIL seems inconclusive, as it refers as often as not to the Complainant or the Respondentís products as to a descriptive or generic-type use referring to an article. Therefore, we cannot say that the Complainantís asserted trademark NTMAIL is generic.
This does not mean, however, that the Complainant has established that it has rights in the asserted mark NTMAIL. The evidence the Respondent submitted certainly proves that the individual terms of the Complainantís asserted mark are at best descriptive, and hence unprotectible without proof of acquired distinctiveness or secondary meaning. 2 McCarthy on Trademarks, ß 15:2 (2000). The Complainantís only evidence on the issue of acquired distinctiveness or secondary meaning are in the nature of product reviews or web sites offering the Complainantís products for sale. This evidence falls short of proving that the terms have acquired secondary meaning or distinctiveness in the eyes of the purchasing public.
The Panel is not satisfied that the Complainant has met the requisite standard of proof that the combination "NT MAIL SERVER" is strongly associated with and distinctive of the Complainant. In light of this, the Panel is unable to find that the disputed domain name is confusingly similar or identical to a trademark or service mark in which the Complainant has rights.
Given this finding, it is not strictly necessary for the Panel to go further. However, for the sake of completeness, the Panel does make findings on the other elements of the Policy.
Respondent has no rights or legitimate interests in respect of the domain name
The second burden on the Complainant is to establish that the Respondent has no rights or legitimate interest in the disputed domain name. 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 organization) 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 has stated that it registered the disputed domain name on March 2, 1998. Since June 1998 the Respondent has sold the Complainantís products via its website.
The Respondentís first notice of this dispute was the Complainantís letter of December 4, 2001. Between March 2, 1998, and December 4, 2001, the Respondent was operating its website at <ntmailserver.com> with the full knowledge and apparent consent of the Complainant. The Complainant even provided a link from its own website to the Respondentís website.
This situation falls squarely within paragraph 4(c)(i) of the Policy above. The Respondent plainly used the disputed domain name in connection with the bona fide offering of goods and services before any notice to the Respondent of the dispute. The Respondent has a right or legitimate interest in the disputed domain name in terms of the Policy.
We do not base our finding that the Respondent has a right or legitimate interest in the disputed domain name upon the excerpts from the Memorandum of Understanding submitted by the Respondent for the assertion of a contractual relationship between the parties. The excerpts from the Memorandum of Understanding submitted by the Respondent are inconclusive for this purpose. Specifically, the excerpts from the Memorandum of Understanding do not appear to refer to any agreement by the Respondent to host content, to refer sales inquiries, or to link to the Complainant. Rather, the excerpts attached to the Response appear to refer to telephone support for the Complainantís own products. Although there is a sheet referring to the Complainantís predecessorís program, which includes commissions paid on referrals, this page does not refer to the Respondent, nor is it signed by the Respondent. Most important, none of the excerpts refer to the web site or domain name <ntmailserver.com>. Therefore, we do not find the Memorandum of Understanding to be competent evidence of a relationship between the Complainant and the Respondent.
Nevertheless, the circumstantial evidence presented by the Respondent provides ample support for its assertion that there has been a business relationship between the parties concerning the web site and the domain name at issue. These include the e-mails from the Complainant to the Respondent regarding their business relationship and the inclusion of the Respondentís name in a list of top resellers of the Complainantís products.
The Complainant has therefore failed to prove this requirement of the Policy.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the 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 website 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 website or location or of a product or service on your website or location."
No evidence or claim has been put forward of breach of paragraphs 4(b)(i) Ė (iii). Nor on the facts does the Panel see that these have any application.
The Complainant alleges that the Respondent registered the disputed domain name in bad faith in order to "draw potential customers away from the Complainantís own sites and entice them to the Respondentís". Presumably, this is an allegation that the Respondentís conduct falls within paragraph 4(b)(iv) of the Policy.
The Complainantís position seems inconsistent with the fact that from August 1998 until after the filing of the Complaint, the Complainant was obtaining a direct benefit from the Respondentís use of the disputed domain name, and had actively encouraged this by:
(a) hosting a link to the Respondentís website on its own website; and
(b) formally recognizing the Respondentís success as an authorized reseller of the Complainantís products.
In light of the evidence of the prior dealings and relationship between the Complainant and the Respondent, the Panel does not consider that there is any evidence at all that the Respondent has acted in bad faith.
The Panel also wishes to record that the Complainant failed to disclose any information regarding its prior dealings with the Respondent. This information was obviously highly material to the dispute. If a Response had not been filed, the Panel would have had an incomplete and distorted understanding of the events leading up to the filing of the Complaint.
Reverse Domain Name Hijacking
Rule 1 defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." (See also Rule 15(e).) To prevail on such a claim, Respondent must show that Complainant knew of either the Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v Trilynx Pty. Ltd., WIPO Case No. D2000-1224, (October 31, 2000).
Further, when determining whether the Complainant brought the Complaint in bad faith, the Panel should consider both "malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate interests." Goldline International, Inc. v Gold Line, WIPO Case No. D2000-1151 (January 4, 2000) citing, Loblaws, Inc. v Presidentchoice.inc / Presidentchoice.com, Case Nos. Af-0170a to Ė 0170c (eResolution, June 7, 2000).
The Panel considers that the Complainant could not realistically have expected that having known of, condoned and encouraged the use of the disputed domain name by the Respondent for more than three years it could then allege that the Respondent had no legitimate right or interest in that domain name. Accordingly, the Panel finds that the Complainantís filing of its Complaint constitutes Reverse Domain Name Hijacking.
For the foregoing reasons, the Panel decides that:
(a) the domain name <ntmailserver.com> is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) the Respondent has a legitimate right or interest in respect of the domain name <ntmailserver.com>;
Accordingly, the Panel refuses to order that the disputed domain name <ntmailserver.com> be transferred to the Complainant.
Dated: June 24, 2002