WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Verint Systems Inc. v. CRYSTALSTEVENS

Case No: D2002-0896

 

1. The Parties

The Complainant is Verint Systems Inc., a corporation organized in the State of Delaware, United States of America ("USA"), with place of business in Woodbury, New York, USA.

The Respondent is CRYSTALSTEVENS, with address in San Mateo, California, USA.

 

2. The Domain Names and Registrar

The disputed domain names are <verint.com>, <verint.net> and <verint.org>.

The registrar of the disputed domain names is VeriSign, Inc., with business address in Dulles, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a Complaint via e-mail received by the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2002, and via courier mail received by the Center on October 1, 2002. Complainant paid the requisite filing fees. On September 27, 2002, the Center transmitted a Request for Registrar Verification to the Registrar, VeriSign, Inc., with the Registrarís Response received by the Center on September 30, 2002.

(b) On October 2, 2002, the Center transmitted notification of the Complaint and commencement of the proceeding to Respondent via e-mail and courier mail. The last day for submitting a Response was set forth as October 22, 2002. The courier mail notification appears to have been successfully delivered (there being no indication in the Centerís file otherwise).

(c) On October 24, 2002, the Center transmitted via e-mail notification to Respondent of its default in responding to the Complaint.

(d) On October 30, 2002, the Center invited the undersigned to serve as Panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On November 6, 2002, the undersigned transmitted the executed Statement and Declaration to the Center.

(e) On November 7, 2002, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole Panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by November 21, 2002. The Panel received a hard copy of the file in this matter by courier from the Center.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant has filed intent to use applications for registration of the trademark and service mark "VERINT" on the Principal Register at the United States Patent and Trademark Office (USPTO), Ser. No. 78102884, filed January 15, 2002, for typed drawing in International Class (IC) 9 (covering "computer hardware and software for use in the fields of telecommunications, digital security and surveillance, computer and telecommunication networks and multimedia for use in the monitoring, acquisition, recording, analysis and storage of voice, fax, video, Internet, data and desk-top screen imagery from multiple telecommunication channels, and instruction manuals, sold as a unit") and IC 42 (covering "computer consulting services in the fields of business enterprise solutions, computer software and hardware, telecommunications, digital security and surveillance, computer and telecommunication networks and multimedia"), and Ser. No. 78106170, filed February 1, 2002, for design and letters (in the same ICs and covering the same goods and services as above). On February 11, 2002, Complainant filed an allegation of actual use with the USPTO with respect to Ser. No. 78102884, claiming a date of actual first use of the mark of February 1, 2002. On June 17, 2002, the USPTO approved that application for publication. On May 20, 2002, the USPTO approved Ser. No. 78106170 for publication, and on July 23, 2002, that application was published for opposition. (Complaint, paras. 18-19, 32-35 & Exhibits 4-5).

Complainant has also filed trademark and service mark applications for "VERINT" in countries outside the United States (id., para. 20).

Although not disclosed by Complainant in its Complaint, Complainant maintains an active commercial Internet website at URL "www.verintsystems.com" (Panel visit of November 21, 2002).

Complainant was formerly known as Comverse Infosystems, Inc., and undertook the foregoing trademark and service mark applications in connection with a change of its corporate name to "Verint Systems Inc.". Complainant issued a nationwide press release concerning its name change on February 1, 2002. (Complaint, e.g., at para. 31).

In connection with its name change, Complainant (through its counsel) conducted trademark and domain name searches. The disputed domain names <verint.com>, <verint.net> and <verint.org> were listed as scheduled to expire on May 22, 2001, in a VeriSign WHOIS database report as of January 24, 2002 (id., para. 1 & Exhibit 1). Complainant was unable to register the disputed domain names in January 2002, because of an asserted failure of the Registrar to have deactivated the names. Complainant retained an investigative firm, Marksmen, "to take steps to acquire the disputed domain names from Respondent" (id., para. 1 & Exhibit 6).

According to the Registrarís Verification to WIPO, "CRYSTALSTEVENS" is the registrant of the disputed domain names <verint.com>, <verint.net> and <verint.org>. The administrative contact is the same, with e-mail address bonniecrystal@aol.com. According to VeriSign WHOIS database reports furnished by Complainant, the records of the disputed domain names were created on May 22, 2000, and were last updated on August 21, 2002. The records are scheduled to expire on May 22, 2003. (Complaint, Annex 1).

There is no evidence on the record of this proceeding that the disputed domain names have been used in connection with active Internet websites.

Starting on January 15, 2002, Marksmen (Complainantís investigative firm) promptly determined from Network Solutions Inc. (NSI), predecessor of Verisign, Inc., that the disputed domain names remained registered to Respondent, who would "need to pay renewal fee". Marksmen also promptly determined that Respondent "CRYSTALSTEVENS" included Bonnie A. Crystal and Jessica L. Stevens, each of whom is a founder and senior officer in the firm "Telegen", located in San Mateo, California. (Report from Marksmen to Erik Kahn, dated March 31, 2002, submitted as Complainantís Exhibit 6, hereinafter "Marksmen Report").

Telegen is a publicly traded company whose innovative products address "the digital television, broadband, wireless flat panel display and digital imaging markets". (Panel visit to "www.telegen.com" of November 21, 2002).

Ms. Jessica Stevens is described on Telegenís website as follows:

"Jessica L. Stevens is the Chief Executive Officer, President and Chair of the Board of Telegen Corporation. Ms. Stevens has been an senior executive and entrepreneur since 1972. In May 1990, she co-founded Telegen Corporation with Bonnie Crystal and also serves as the Chair of the Board, President and Chief Executive Officer of the Company's subsidiaries, Telegen Communications Corporations, Telegen Display Corporation and Telisar Corporation.

From 1988 to 1989, Ms. Stevens was Chair of the Board of Directors and Vice President of Engineering/Manufacturing at Absolute Entertainment, Inc. and Imagineering, Inc., both of New Jersey. From 1982 to 1988, Ms. Stevens was President, Chief Executive Officer, and a director of Woodside Design Associates, Inc., Redwood City, California, a high technology think tank. Ms. Stevens has worked as a consultant to numerous high technology companies including Apple Computer, Inc., Activision, Inc., AT&T, GEC Marconi, McDonnell Douglas and Parker Brothers.

In June 2001, Ms. Stevens was appointed to the Technological Advisory Council of the Federal Communications Commission, a prestigious scientific council of nationally recognized technologists chartered under the Federal Advisory Committee Act to provide advice and counsel to the FCC. Ms. Stevens has been awarded four U. S. patents and currently has twenty five U. S. patents pending. She is an active member of the Society for Information Display (SID)." (Panel visit to "www.telegen.com" of November 21, 2002).

Ms. Bonnie A. Crystal is described on Telegenís website as follows:

"Bonnie Crystal is Telegen's Executive Vice President, Chief Technology Officer and Secretary. Ms. Crystal has been a telecommunications and wireless engineer, consultant and inventor since 1972. In 1990, she co-founded Telegen Corporation with Jessica L. Stevens and served as Executive Vice President and Secretary until 1997, returning to those positions in 1998. She has been a director of Telegen since 1990.

From 1989 to 1991, Ms. Crystal was Senior Staff Engineer for R&D for Toshiba America MRI, Inc. From 1984 to 1989, she was a Senior Engineer at Astec, USA, Ltd. in Personal Communications Systems, Cellular, and Satellite Earth Stations. She is the inventor of the Video Noise Reduction (VNR) standard for satellite receivers, a technology which shrunk the size of satellite dishes in the late 80s. She was a founder of International MedCom, Inc. and SE International, Inc. Ms. Crystal was instrumental in research to bring MRI (Magnetic Resonance Imaging) to a higher resolution at lower cost, so that diagnostic medicine can now see the fine details inside the living body." (Panel visit to "www.telegen.com" of November 21, 2002).

"Telisar", a subsidiary of Telegen, develops and produces advanced telecommunications equipment (see "www.telisar.com"). According to a recent press release:

"SAN MATEO, Calif. ó [PRNewswire] óApril 15, 2002 ó Telisar Corporation, a subsidiary of Telegen Corporation [OTC BB:TEGN], announced today that it has been awarded a prestigious Mario Award at the conclusion of this yearís National Association of Broadcasters NAB2002 trade show. The Mario Awards, presented by TV Technology magazine, recognize the top ten breakthrough technologies from among the more than 1,400 exhibitors at the show. Past winners of the Mario Award have included such industry leaders as Panasonic, Sumitomo, Fujinon and Power-tek International.

Telisar received the Mario Award for its proprietary Separate Video Program (SVP) technology, which provides a full digital television channel embedded within a regular analog television transmission, allowing two separate channels to be broadcast in the same spectrum while maintaining compatibility with existing analog televisions and broadcasting equipment."

Also according to information at the website:

"On October 19, 2000, Telegen acquired a controlling interest in ĎTelisar Corporationí, which is developing broadband datacasting solutions for high speed delivery of digital products such as audio, video, software and information content and services. Telisar's unique patent-pending wireless and datacasting technologies, along with Telegen Communications Corporation's patented communications and compact antenna technologies, are expected to provide an efficient, high speed delivery channel for the expanding digital marketplace." (Panel visit of November 21, 2002).

Upon initially attempting to contact Ms. Crystal or Ms. Stevens at Telegen (in late January 2002), Marksmenís representative was advised that they were busy with corporate business, and would have difficulty responding to inquiries. A receptionist advised that Telegenís Board had considered "Verint" as the name for a new subsidiary and, although that name was not used for the subsidiary, Ms. Crystal had decided to register it. Eventually, Ms. Stevenís responded to repeated inquiries from the Marksmen representative, indicating that Respondent would consider an offer from Complainant to purchase the disputed domain names. (Marksmen Report).

Thereafter ensued several weeks of intermittent negotiations between the Marksmen representative (under continuing instruction from Complainant), and Respondent. Complainant offered $7,000 for the three names, an offer Respondent deemed inadequate. Respondent apparently said that an acceptable purchase price would be more than $10,000, and less than $1,000,000. (Marksmen Report).

Respondent on February 1, 2002, also registered a number of other "VERINT"-similar domain names, including, e.g., <varintsucks.com>, <verintsucks.net> and <verintsucks.org> (see VeriSign WHOIS data furnished by Complainant, Complaint, Exhibit 8, regarding date of record creation), and was offering to sell a complete package of "VERINT" and "VERINT"-similar names to Complainant. Furthermore, on February 1, 2002, Bonnie Crystal filed an intent to use application with the USPTO for the typed drawing service mark "VERINT", Ser. No. 78106339, in IC 45, covering "Electronic networking and verification of security video and audio storage and retrieval equipment and associated Internet access". A non-final action letter has been mailed to Respondent, referring inter alia to the potential for confusion with Complainantís previously-applied-for marks (Complaint, Exhibits 7 & 9).

By the unsuccessful conclusion of negotiations Complainantís representative had been authorized to offer $15-$20,000 to Respondent, and had offered $12,500 for <verint.com>, and an additional $1,000 each for <verint.net> and <verint.org>. Respondent had offered to sell those three names for $55,000. The last contact from Respondent rejecting Complainantís offer appears to have been an e-mail of February 14, 2002. (Marksmen Report).

During the course of negotiations, Markmenís representative had advised Complainant that it "Also, could go to the UDRP, but as the seller has pre-existing rights to the names, it would be a long shot." (Marksmen Report).

The Service Agreement in effect between Respondent and VeriSign, Inc. subjects Respondent to VeriSign, Inc.ís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant asserts rights in the trademark and service mark "VERINT" based on applications for registration of the mark filed with the USPTO, and use in commerce (see Factual Background, supra). Complainant asserts that "Under U.S. trademark law, the filing date of January 15, 2002, acts as Complainantís constructive date of first use of the mark VERINT, which confers a right of priority nationwide in effect. See Lanham Act, Section 7(c), 15 U.S.C. 1057(c)".

Complainant alleges that the disputed domain names are identical or confusingly similar to its mark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Although Respondent initially registered the disputed domain names prior to Complainantís adoption of its mark, because Respondent did not have any demonstrable plan for a specific use of the domain names, its action in registering them was "speculative" and precluded others with an interest from registering the names. This, according to Complainant, constitutes impermissible "warehousing" that does not establish rights or legitimate interests (citing J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054).

Complainant argues that Respondentís failure to use the disputed domain names for over two years for a fair purpose equates with failure to use in connection with a bona fide offering of goods or services.

Complainant concludes on this element that "Based upon the totality of the circumstances in this case, the only interest the Respondent appears to have in the disputed domain name is to deprive the Complainant of the opportunity to reflect its mark in that domain name and to improperly hold the Domain Names ransom for a profit. Thus, Respondent does not have any legitimate interest in the Domain Names under the Policy."

Complainant alleges that Respondent registered and used the disputed domain names in bad faith. Complainant argues that Respondent "re-registered" the disputed domain names after the initial registration had lapsed, and only after receiving notice of Complainantís "plans to adopt and use the mark VERINT". The failure of the Registrar to timely deactivate the names created a situation in which Respondent acted in bad faith in re-registering them.

Complainant asserts:

"While bad faith renewals have been held to be the basis for finding for the Complainant under the Policy, here, Respondentís rights had terminated and the renewals were only accomplished as a result of a delay by the Registrar in deactivating the Domain Names. Therefore, the renewal should, under the circumstances, be treated as a re-registration for purposes of evaluating bad faith."

Complainant refers to several UDRP panel decisions which it alleges stand for the proposition that "intentional renewal of a contested domain name registration after a Respondent has received notice from a Complainant as to its legitimate interests in the domain name and apparently in total disregard of those interests is evidence of bad faith under the Policy" (citing Houlberg Development v, Adnet International, NAF Claim No. FA0009000095698; ABF Freight System Inc v. American Legal, WIPO Case No. D2000-0185; Wine.com, Inc. v. Zvieli Fisher, WIPO Case No. D2000-0614; Faithnet, Inc. v Believers Fellowship of Lakeland, NAF Claim No. 0002000093666, and; Sydkraft AB v. Control Alt Delete, WIPO Case No. D2000-0381).

Complainant asserts that Respondent has attempted to practice a fraud upon the USPTO by filing an intent to use application without any bona fide plan to use the applied-for mark in the ordinary course of trade. On such basis, any registration that would issue would be subject to cancellation.

Complainant alleges that Respondentís re-registration of the disputed domain names with knowledge of Complainantís rights with the intention to sell them to Complainant evidences bad faith registration and use.

Complainant argues that Respondent provided false contact information in its registration, and this evidences bad faith. Complainant states that Respondent was obligated to keep its registration information up-to-date and complete.

Complainant contends that Respondentís failure to use the disputed domain names for over two years evidences bad faith.

Complainant requests that the Panel direct the registrar to transfer the disputed domain names to it.

B. Respondent

Respondent did not reply to Complainantís contentions.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

Each of the aforesaid three elements must be proved by a Complainant to warrant relief.

Complainant asserts rights in the trademark and service mark "VERINT" based on intent to use applications filed with the USPTO and use in commerce. Complainant asserts that it constructively used the mark on January 15, 2002, based on the filing of its initial application on the basis of Section 7(c) of the Lanham Act, 15 U.S.C. 1057(c). However, Section 7(c) of the Lanham Act provides in relevant part:

"(c) Application to Register Mark Considered Constructive Use. Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, Ö"

Complainantís applications have not yet resulted in registration on the Principal Register. The contingency specified in the first clause of Section 7(c) has not been met. Thus, Complainant does not enjoy constructive use of its mark as of January 15, 2002.

Complainant has submitted to the USPTO an allegation of actual use of the mark as of February 1, 2002. Taken in the light most favorable to Complainant, it acquired rights to the trademark and service mark "VERINT" based on use in commerce on that date.

Complainantís asserted mark is not registered on the Principal Register, and Complainant has advised only regarding publication of the mark. A notice of allowance has not been issued. It has no rights in the mark based on actions taken so far in respect to the USPTO.

Complainant presently uses "VERINT" in connection with an active commercial Internet website. It is using the term in commerce in the United States. Complainant states that it issued an official press release of a corporate name change on February 1, 2002, and has asserted a date of first use in commerce at the USPTO of February 1, 2002. "VERINT" is sufficiently suggestive or arbitrary not to require proof of secondary meaning. In the absence of counterpleading from Respondent, the Panel accepts that Complainant acquired common law trademark and service mark rights in "VERINT" based on use of that term as of February 1, 2002. The Panel accepts the accrual of rights on that date largely on the basis of Complainantís uncontested statement to the USPTO. It does so in light of the fact that it will deny its request for transfer of the disputed domain name.

The disputed domain names <verint.com>, <verint.net> and <verint.org> are identical to Complainantís mark.

Complainant has met the burden of proving that the disputed domain names are identical to a trademark or service mark in which it holds rights.

The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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." (Policy, paragraph 4(c))."

Respondent initially registered the disputed domain names approximately nine months prior to Complainantís use of "VERINT" as a mark. Respondent registered the names as part of a process of considering names for new corporate subsidiaries. Although Respondent apparently had decided not to use the "VERINT" name immediately, it presumably registered the domain names because they might be useful to its business purposes in the future. Respondent is in a business in which subsidiaries are formed with some degree of regularity. Respondent did not initially register the names with bad intention toward Complainant (or any third party based on Complainantís own determination that "VERINT" would not infringe third party rights). As to the initial registration, Respondent without notice of a dispute registered the disputed domain names in preparation to use them in connection with a bona fide offering of goods or services. The fact that Respondent chose not to use the names is immaterial.

Complainant argues that upon "re-registering" the dispute domain names, Respondent gave up whatever rights it may have had in connection with the initial registration. This argument is principally argued in respect to Complainantís allegations of bad faith.

Complainant has gone to some lengths to characterize and distinguish Respondentís actions as "re-registration" rather than "renewal". However, there are several gaps in Complainantís theory regarding the significance of "re-registration".

First, Complainant has not explained how the passage of the nominal date of Respondentís registration constituted cancellation of the registration. Apparently, the disputed domain names were registered at all relevant times by the Registrar, which advised Complainantís representative that Respondent owed renewal fees for the registrations. Complainant says that the Registrar failed in its duties, though it is not entirely clear to whom the Registrar owed duties in this context. Assuming solely for the sake of argument that the Registrar owed someone a duty to terminate Respondentís registrations, its failure to perform that duty is the Registrarís responsibility, not Respondentís. Respondent maintained active registrations at all material times.

Second, Complainant has not established the date on which Respondent renewed its registrations. Complainant first established rights in "VERINT" on February 1, 2002. Respondent is said to have been made aware of Complainantís intentions to use the mark by virtue of its first application for registration at the USPTO on January 15, 2002, and later by virtue of its February 1, 2002 press release. But Respondent is not obligated to take into account Complainantís "business plans" for use of a mark, including contact from Complainantís representative regarding those plans. Complainant had no rights in the mark prior to February 1, 2002, and Complainant has not established that Respondent renewed its registrations after Complainant acquired those rights.

Third, even assuming that Respondent renewed its registrations after February 1, 2002, the Panel does not accept that renewal of a registration constitutes a new set of circumstances regarding rights that a Respondent may have established, nor does it constitute a new set of circumstances in respect to bad faith.

In a previous case (LandAmerica Financial Group, Inc. v. Joseph Virzi, WIPO Case No. D2002-0145), this sole Panelist considered the issue of the effect of a renewal, but did not need to draw a conclusion regarding the effect because the complainant in that case had not established that the renewal took place following its establishment of rights in a mark. In that case, this sole Panelist said:

"Complainant has argued that renewal of the registration of the disputed domain name is the legal equivalent of initial registration and that for each act of renewal a new set of factual circumstances arises. Paragraph 2 of the Policy, and by incorporation the service agreement to which each registrant agrees, expressly indicates that when a registrant asks the registrar to Ďregisterí or to Ďmaintain or renewí a domain name, the registrant makes representations and warranties to the registrar, including that it is not knowingly infringing third party rights. Paragraph 4 of the Policy, however, does not base a finding of abusive domain name registration and use on breach of the representations and warranties set out in Paragraph 2. It establishes a separate set of legal criteria for establishing abuse. Paragraph 4 of the Policy speaks only in terms of the Ďregistrationí of the domain name by the responding party, and not in terms of Ďmaintainingí or Ďrenewingí the domain name registration."

A substantial number of administrative panel decisions under the Policy have addressed the effect of renewal, and the weight of that authority holds that renewal does not create a new set of circumstances for evaluating rights and bad faith. These decisions have examined the express language of the Policy, as above, as well as consideration of this issue during the WIPO Internet Domain Name Process (see, e.g., Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782 (including review of precedents); Spirit Airlines, Inc. v. Spirit Airlines Pty., Ltd., WIPO Case No. D2001-0748; Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528 [distinguishing paras. 4 a(ii) and (iii), Policy, and holding no new consideration of circumstances in respect to bad faith]; Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 [limited to bad faith factor], and; Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005.

Complainant has not sought to address this unsupportive precedent, but has referred to several decisions. In Houlberg Development v. Adnet International, NAF Case No. FA0009000095698, substantially relied on by Complainant, the panel did, in a brief analysis, refer to a Respondent as having breached paragraph 2(b) of the Policy by renewing in bad faith. As it discussed by this sole Panelist in LandAmerica, quoted above, proceedings under the Policy are directed to determining whether paragraph 4(a) has been violated, not paragraph 2(b). The language is different. To the extent that this decision may be understood to be inconsistent with Houlberg, the Panel does not accept the reasoning of that decision. ABF Freight System, Inc. v. American Legal, WIPO Case No. D2000-0185, does not provide support for Complainantís position. In ABF Freight, the Respondent had registered a domain name identical to the Complainantís mark prior to adoption of the Policy. The Respondent renewed its registration after the Policy came into effect. The initial registration would have contravened the later-adopted Policy. The renewal was considered in that context to apply the Policy to the circumstances. Similar circumstances pertained in Sydkraft AB v. Control Alt Delete, WIPO Case No. D2000-0381.

The Panel finds that Respondentís renewal of its registration did not divest it of the rights in the disputed domain name that it obtained on its initial registration.

The Panel also finds that Respondent did not register and use the disputed domain names in bad faith. When it initially registered the names, Complainant had no rights in a mark. There is no plausible basis for suggesting the Respondent initially registered the disputed domain names in bad faith. Even in theory, it might only have renewed the names in bad faith.

The Panel has held above that renewal does not establish a new factual context of registration for purposes of paragraph 4(a) of the Policy. However, that determination is not necessary to reject Complainantís multiple assertions of bad faith here.

Complainant acquired rights in its mark on February 1, 2002, no earlier. It has not demonstrated that Respondent renewed its registration on or after that date. Respondent might just as well have renewed its registrations some time between January 15 and 31, 2002. Respondent was under no obligation to make sure that nothing went wrong with Complainantís corporate renaming plan. Relevant to these proceedings, Paragraph 4(b) of the Policy indicates that the following "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;" [italics added]

Complainant has not shown that it owned trademark or service mark rights at the point at which Respondent renewed the disputed domain names. Likewise, other motives that Complainant has attributed to Respondent would not establish bad faith in the absence of rights in a mark of Complainant at the time of renewal, which time has not been established.

Complainant has failed to establish that Respondent registered and used the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy.

The Panel declines to direct the Registrar to transfer the disputed domain name to Complainant.

Respondent in this case has attempted to profit from its good faith registration of domain names that Complainant has developed an interest in securing. The Policy does not prohibit such action. This decision does not address the respective rights of the parties regarding use of the term "VERINT" in connection with their respective businesses. That is a matter left for the parties to sort out in other fora.

 

7. Decision

The Panel determines that Complainant, Verint Systems Inc. has failed to establish that Respondent, CRYSTALSTEVENS, lacks rights or legitimate interests in the disputed domain names, <verint.com>, <verint.net> and <verint.org> within the meaning of paragraph of 4(a)(ii) and 4(c) of the Policy, and that Complainant has failed to demonstrate that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b) of the Policy. The Panel therefore rejects Complainantís request to order the registrar to transfer the disputed domain names to it.

 


 

Frederick M. Abbott
Sole Panelist

Dated: November 21, 2002