WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

WebIAm, Inc. v. RMK Corporation

Case No. D2002-1091

 

1. The Parties

Complainant is WebIAm, Inc., whose principal place of business is located in Millburn, New Jersey, United States of America, and which is represented by Angelo Notaro, Esq. of Notaro & Michalos P.C., Orangeburg, New York, United States of America.

The Respondent is RMK Corporation, whose principal place of business is located in New York, New York, United States of America.

 

2. The Domain Names and Registrar

The disputed domain name, <webiam.com>, is registered with Network Solutions, Inc. of Dulles, Virginia, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2002, by e-mail and on December 2, 2002, in hard copy. On November 28, 2002, the Center transmitted by email to VeriSign, Inc. a request for registrar verification in connection with the domain names at issue. On December 3, 2002, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint incorrectly named the Registrar, the Complainant filed an amendment to the Complaint on December 9, 2002. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on December 10, 2002. On December 11, 2002, the Center sent the Respondent an amended Notification of Complaint. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2002. The Respondent submitted a Response on December 27, 2002.

The Center appointed Dennis A. Foster as the sole Panelist in this matter on January 7, 2003. The Panel finds that it was properly constituted. The Panel had on January 6, 2003, submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

- Complainant was incorporated on June 8, 1999. It began furnishing software development services under the name, "WebIAm, Inc.", using the disputed domain name, which was registered to Respondent on May 10, 1999.

 

5. Partiesí Contentions

A. Complainant

- Complainant is a closely held corporation having three shareholders, Steven Maybaum, Eric Nissan and Robert Kaskel ("Kaskel"), which has provided software development and consulting services since its incorporation, June 8, 1999.

- Complainant has common law trademark rights in the name, "WebIAm", which is distinctive, fanciful and arbitrary. Complainant has established considerable good will under the name and brand awareness through Complainantís efforts and expenditures.

- Complainant has generated revenues of nearly $1.6 Million through its "Webiam" services. This revenue flowed from Complainantís website activity found at the disputed domain name <webiam.com>, on which Complainant has spent $7,000 in design fees and which Kaskel registered on Complainantís behalf. Complainant reimbursed Kaskel for the cost of such registration, but there is no written agreement between Complainant and Kaskel.

- Kaskel caused the disputed domain name to be registered to Respondent, of which Kaskel is the sole owner.

- On September 11, 2002, Kaskel resigned as an officer of Complainant, and subsequently offered to have Respondent sell the disputed domain name to Complainant for $100,000. Complainant requested that the name be transferred to it without cost.

The disputed domain name is identical or similar to a trademark in which the Complainant has rights.

- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its trademark. Respondent is not commonly known by a name similar to the disputed domain name. Respondent has not used and is not using the name in an offering of goods or services. Respondentís owner registered the disputed domain name as an agent on behalf of Complainant, and thus has no legitimate rights or interests in the name.

- Respondent registered the disputed domain name in bad faith. Respondent was aware of its fiduciary duty to Complainant with respect to the name. Respondent is not using the name for any purpose. Respondentís offer to sell the name for far more than registration costs is further evidence of bad faith, as is Respondentís subsequent threat to disrupt Complainantís business by restricting Complainantís access to addresses under the disputed domain name.

B. Respondent

- Respondent is 100% owned by Kaskel and provides software development, systems integration, product development and export services.

- Respondent has created and registered a number of domain names including <webiam.com>, which was conceived by Kaskel based on his exposure to the Dr. Seuss book, Green Eggs and Ham, where the main character repeats the phrase "Sam I am."

- Kaskel created Complainant, inviting others to join him in the venture, and Complainant was incorporated approximately a month after the disputed domain name was registered on behalf of Respondent on May 10, 1999.

- Respondent lent usage of the disputed domain name to Complainant, who later on transferred those rights to a third party, WEBiX, Inc.

- In January 2002, Kaskel and the other principals of Complainant signed employment agreements with WEBiX, Inc., which provided for the relatively swift termination of Complainant. WEBiX, Inc. then merged with XCHANGE Corporation, which acquired among other things the usage rights to the disputed domain name.

- Complainant is currently attempting to cause a breach of the merger agreement with XCHANGE Corporation and the aforementioned employment agreements, and claim the disputed domain name, which it never owned.

- If "WebIAm" is a trademark by common law, that trademark belongs to Respondent.

However, "WebIAm" is not a common name known in any technology industry.

- Since January 2002, Complainant has ceased to be in business and has therefore not added any brand awareness to the mark "WebIAm" after that date. Such awareness was limited to some investment firms doing business in New York, who were Complainantís primary clients.

 

6. Discussion and Findings

- In accordance with paragraphs 4(a)(i) through (iii) of the Policy, Complainant may succeed through these proceedings and obtain a transfer of the disputed domain name if Complainant can prove the following:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

- Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

In this Case, Complainant has not furnished the Panel with any evidence that it owns a registered trademark or service mark in the name, "WebIAm." Instead, Complainant hopes to rely on common law rights to establish its ownership of a trademark, "WebIAm." Respondent disputes that such common law rights exist, but asserts that, if they do, they belong to Respondent.

To support its claim of common law rights, Complainant presents the Panel with only Complainantís own declarations about the duration of the nameís use (less than four years before the filing of the Complaint, but not just by Complainant), graphic design fees of $7,000 for its website and total company revenues of less than $1.6 Million. Even if accepted by the Panel, these claims fall short of proving that the mark, "WebIAm", is so well-known with at least a notable segment of the public that it has attained a secondary meaning associated exclusively with Complainant or its services. Moreover, the Panel has no independent knowledge of the mark through national or international fame or otherwise. Thus, the Panel possesses insufficient evidence in this Case to find that Complainant does indeed have common law trademark rights in the name, "WebIAm."

Accordingly, the Panel finds that Complainant has failed to satisfy its burden of proof in establishing that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Since Complainant must succeed with respect to each of the three separate criteria listed in paragraph 4(a) of the Policy to prevail in these proceedings, the Panel will not render a determination as to whether the Complainant has met its burden of proof with respect to paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

 

7. Decision

Because Complainant has not met its burden to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complaint is denied. Thus, per paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <webiam.com>, remain registered to Respondent, RMK Corporation.

 


 

Dennis A. Foster
Sole Panelist

Dated: January 21, 2003