WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

H&M Systems Software, Inc. v. dotPartners LLC

Case No. DBIZ2002-00063

 

1. The Parties

The Complainant in this administrative proceeding is H&M Systems Software, Inc. ("H&M"), a New York corporation having a place of business in Upper Saddle River, New Jersey, United States of America. The Respondent is dotPartners LLC ("dotPartners"), a New Jersey Limited Liability Company having a place of business located in Livingston, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The domain name involved in this proceeding is <argos.biz>.

The Registrar with whom the domain name is registered is Network Solutions, Inc. of Herndon, Virginia, United States of America.

 

3. Procedural History

On April 25, 2002, H&Mís Complaint was filed by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") for decision in accordance with the Start-Up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001 (the "STOP"), 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"). See, STOP Rules, Paragraph 3(b)(c). The Center received a hardcopy of H&Mís Complaint on April 29, 2002.

It appears that the Complaint was filed in accordance with the requirements of the STOP Rules and WIPO Supplemental STOP Rules, and that payment was properly made.

On May 28, 2002, the Center notified H&M that, under STOP rules, Paragraph 4(b) it was required to cure one formal deficiency, namely, to include a statement under Section VIII (Other Legal Proceedings) as to whether there were any other pending proceedings, judicial, administrative or otherwise with respect to the contested domain name. H&M cured this deficiency by filing a supplemental Complaint with the Center on June 5, 2002. On June 10, 2002, the Registrar, Network Solutions, Inc., verified that it is the Registrar for the contested domain name, <argos.biz>.

After reviewing the case file, the Panel deems that dotPartners was properly notified in accordance with the STOP Rules.

On June 10, 2002, the Center notified the parties of the commencement of this administrative proceeding, giving dotPartners until June 30, 2002, to file its Response to H&Mís Complaint. On July 1, 2002, dotPartners filed by e-mail its Response to H&Mís Complaint with the Center. A hard copy of dotPartnersí Response was received by the Center on July 4, 2002.

On July 10, 2002, the Center contacted the undersigned to solicit interest in being the sole panelist who would decide this matter. After clearing potential conflicts of interest, the undersigned notified the Center on July 12, 2002, of the ability and availability to serve as sole panelist for this matter. On July 15, 2002, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the Administrative Panel for this proceeding was properly constituted.

On July 15, 2002, the Center forwarded to the undersigned the case file for this proceeding. On that same date, a Notification of Appointment of Administrative Panel and Projected Decision Date were sent by the Center to the parties. The Center notified the parties that the undersigned would be the Sole Panelist to decide this matter.

 

4. Factual Background

A. Complainant

Complainant states that, since 1994, it has been using the "Argos trademarks" for its divisions "Argos Gamewear" and "Argos Networks". The panel has been referred to Complainantís web sites located at the URLs "http://www.gamewear.com" and "http://www.argosweb.net". The Panel has reviewed the web sites to which H&M refers, and notes that there does not appear to be trademark use solely of the term "argos." Rather, "Argos Gamewear" is used in connection with the promotion and sale of what appears to be gaming software, and "Argos Networks" appears to be used to promote and sell web site design and support services.

Complainant states that it was issued a United States trademark registration on March 11, 1997, and a trademark registration from the European Union on February 25, 2000. H&M did not submit to the Center copies of either registration. The Panel has taken the liberty of reviewing the online database of the U.S. Patent and Trademark Office, and discovered that, indeed, H&M was granted a registration on March 11, 1997, for the mark ARGOS GAMEWEAR.

H&M contends that "Respondent was not truthful in the Sunrise application and should not have been permitted to file for the domain name" as Respondent did not own a trademark registration at the time it applied to register the <argos.biz> domain name. H&M also alleges that the parties exchanged e-mail correspondence during the month of April 2002, at which time dotPartners allegedly offered to sell the <argos.biz> domain name to H&M for $1,000 (US).

B. Respondent

Respondent claims that H&Mís Complaint is completely lacking of any evidence that Respondent, dotPartners, lacks a legitimate interest with respect to the contested domain name. dotPartners also alleges that there is no evidence of its bad faith registration or use of the <argos.biz> domain name.

dotPartners further states that Complainant has not offered a scintilla of evidence that the contested domain name was registered with H&M in mind ó that is, to sell it to H&M, to disrupt H&Mís business, to prevent H&M from reflecting its mark in a domain name or to confuse consumers.

Supported by a declaration of its managing partner, Respondent asserts that it has a legitimate interest in the contested domain name. dotPartners avers that it had and has made demonstrable preparations to use the contested domain name in connection with the bona fide offering of services. dotPartners intends to use the <argos.biz> domain name for a search engine web site. The search engine service will be hosted at a URL corresponding to the contested domain name once the captioned proceeding is resolved and the Registry hold is removed from the domain name.

dotPartners further contends that the term "argos" is not a coined mark but, rather, a word in the dictionary. An online dictionary reference was attached to the Response in support of this contention.

Respondent also asserts that the term "argos" is the subject of substantial third-party use on the Internet, unaffiliated with Complainant, H&M. This contention is supported by documentation submitted with the Response, namely: search engine search results, third-party trademark registrations issued in the United States, and numerous third-party domain names containing the word "argos".

Respondent further contends that it was not dotPartners, but rather H&M, who initiated communications with respect to an offer to sell the contested domain name. Respondentís view of the facts is supported by copies of the exchanges of e-mail correspondence between the parties attached to the Response.

 

5. Partiesí Contentions

A. Complainant

H&M asserts that (i) the contested domain name is identical to a trademark or service mark in which H&M has rights; (ii) dotPartners has no rights or legitimate interests in respect of the contested domain name; and (iii) the <argos.biz> domain name was registered or is being used in bad faith.

Further, says H&M, dotPartners offered to sell the domain name to H&M for $1,000. Additionally, Respondent is alleged to have registered the domain name in contravention to the .BIZ Registryís "Sunrise Policy."

B. Respondent

dotPartners disagrees with most of Complainantís contentions. dotPartners does not dispute that the <argos.biz> domain name is identical to a trademark in which Complainant has rights. dotPartners vigorously disputes H&Mís contention that Respondent does not have rights or legitimate interests in respect of the contested domain name. Further, dotPartners disputes that the domain name was registered or is being used in bad faith.

Further, dotPartners alleges that it need not own a trademark registration to have rights or legitimate interests in respect of the domain name. dotPartners also contends that it was not Respondent, but rather Complainant H&M who initiated correspondence with respect to an offer to sell the contested domain name. Finally, dotPartners requests a finding from the Panel that H&M has engaged in Reverse Domain Name Hijacking in bringing this proceeding.

 

6. Discussion and Findings

Paragraph 15(a) of the STOP Rules instructs this panel to "decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the STOP requires that the Complainant must prove each of the following three elements to obtain an order that a .BIZ domain name should be transferred:

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

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

(iii) the contested domain name has been registered or is being used in bad faith.

In an administrative proceeding pursuant to the STOP, STOP Rules and WIPO Supplemental STOP Rules, the Complainant must prove that each of the three elements is present. STOP, Paragraph 4(a). STOP, Paragraph 4(b) lists a set of circumstances, without limitation if found by the Panel to be present, to be evidence of the registration or use of the domain name in bad faith. On the other hand, Paragraph 4(c) of the STOP lists a set of circumstances, without limitation, if found by the panel to be proved based upon its evaluation of all evidence presented, to be evidence of the Respondentís right to, or a legitimate interest in, the contested domain name. The Panel shall now proceed to weigh the evidence presented against the requirements of the STOP.

The Domain Name is NOT Identical to a Trademark or Service Mark in Which Complainant has Rights

H&M asserts that the <argos.biz> domain name is identical to a trademark or service mark in which it has rights. Curiously, dotPartners states "this issue is not disputed." The Panel cannot fathom why dotPartners chose not to contest this issue.

Paragraph 4(a)(i) of the STOP clearly requires that the contested domain name be identical to a trademark or service mark in which the Complainant has rights. Based upon the evidence before the Panel, H&M does not have rights in the sole term "argos." Rather, the trademark which is the subject of at least a United States registration is ARGOS GAMEWEAR. As stated above, if H&M has any common law trademark rights at all, it is not in the sole term "argos," but rather in the terms "Argos Gamewear" and "Argos Networks."

The terms "Argos Gamewear" and "Argos Networks" are not "identical" to the contested <argos.biz> domain name. Whether the contested domain name is "confusingly similar" to either "Argos Gamewear" or "Argos Networks" is another matter entirely, which, according to the STOP, the Panel may not consider. Therefore, Paragraph 4(a)(i) of the STOP has not been satisfied.

Respondent has Sufficiently Shown that it has Rights or Legitimate Interests in Respect of the Contested Domain Name.

As dotPartners correctly states, ownership of a trademark by a domain name Respondent is not a prerequisite for having rights or legitimate interests in respect of a domain name. Wordworkers Supply Inc. v. Roloff Marketing, Inc., Case No. 103055 (NAF January 30, 2002).

Respondent asserts that it has a legitimate interest in the disputed domain name. dotPartners operates the <Boogie.tv> and <iBoogie.com> search engines, and plans to use the contested <argos.biz> domain name for a search engine web site. These contentions are supported by a declaration submitted by Respondentís managing partner. The fact that the <argos.biz> web site has not yet been launched does not diminish dotPartnersí legitimate interest in respect of the domain name. As a matter of intuitive common sense, dotPartners has not yet been able to launch a web site under the contested domain name due to the Registrarís hold in view of the pendency of this dispute. dotPartners states, and supports with documentation, that it has engaged in substantial efforts and expense to develop its search engine technology for the <argos.biz> search engine web site. This is sufficient. Therefore, Paragraph 4(a)(ii) of the STOP has not been satisfied.

There is Insufficient Proof that Respondent has Registered or Used the Contested Domain Name in Bad Faith

The manner in which the NeuLevel Registryís IP Claim Service and the STOP work together was previously explained in this Panelís Decision in CDW Computer Centers, Inc. v. Swarthmore Associates LLC, WIPO Case No. DBIZ2002-00136 (June 26, 2002). Due to the filing of Complainantís IP claim and the institution of this STOP proceeding, there has not yet been an opportunity for the <argos.biz> domain name to be used either in a bad faith or bona fide good faith manner.

H&M points to other circumstances which, allegedly, support dotPartnersí bad faith registration or use of the contested domain name. First, H&M asserts that dotPartners registered the <argos.biz> domain name in violation of the NeuLevel Registryís Sunrise Policy. A review of the Registryís web site, located at the URL "http://www.newlevel.biz", shows that the NeuLevel.biz domain name Registry has no such "Sunrise Policy". Rather, the policies to which the NeuLevel Registry subscribes is the STOP, the Uniform Dispute Resolution Policy of ICANN, and the Restrictions Dispute Resolution Policy approved by ICANN. Thus, H&Mís assertion that dotPartners registered the contested domain name in violation of the Registryís "Sunrise Policy" is completely fallacious.

Without documentary support, H&M also made statements in its Complaint and Amended Complaint leading the Panel to believe that dotPartners offered to sell the contested <argos.biz> domain name for $1,000 (US). To the contrary, the documentary support submitted with the Response clearly shows that it was Complainant H&M that initiated the partiesí communications. In fact, dotPartners initially rebuffed H&Mís efforts to purchase the contested domain name. As Respondent correctly asserts, the mere willingness to enter into discussions with the Complainant concerning its interest in purchasing the contested domain name does not support a claim of bad faith. The owner of a domain name has a legal right to sell a domain name when asked if he or she will transfer or sell it. Pocatello Idaho Auditorium District V. CES Marketing Group, Inc., NAF Case No. 103186 (February 21, 2002).

Moreover, the Panel presumes that the NeuLevel IP Claim/STOP procedures were implemented, and that dotPartners was notified of H&Mís IP Claim on the <argos.biz> domain name when dotPartners registered the domain name in question. However, as Respondent has shown with documentary evidence annexed to the Response, the term "argos" is a dictionary term, is used by third parties, is incorporated into domain names registered by third parties, and is used as part of trademarks registered to third parties unaffiliated with H&M. H&M does not appear, from the present record, to have trademark rights in the sole term "argos." In view of all the surrounding circumstances and evidence before the Panel, H&Mís claim of dotPartners bad faith registration or use of the contested domain name simply is not supported. Therefore, Paragraph 4(a)(iii) of the STOP has not been satisfied.

Complainant has Engaged in Reverse Domain Name Hijacking

dotPartners submits that this is a case of Reverse Domain Name Hijacking, and that the Panel should declare in its decision that H&M has brought the instant proceeding in bad faith and as a result of an abuse of the STOP process.

Reverse domain name hijacking occurs where a Complainant knows that there is simply no plausible basis for the contentions raised in its Complaint. Prom Software, Inc. v. Reflex Publishing, Inc., WIPO Case No. D2001-1154 (March 4, 2002); Maine Bait Company v. Robin Brooks, NAF Case No. 98246 (August 28, 2001); Supremo n.v. /s.a. v. Rao Tella, WIPO Case No. D2001-1357 (February 15, 2002).

The grounds for dotPartners assertion that H&M has engaged in reverse domain name hijacking in this case are the following:

(i) H&M had no legitimate basis for bringing this Complaint over a common word which is used in connection with several web sites and third-party trademarks;

(ii) H&M attempted to manufacture a bad faith offer to sell the contested domain name by luring dotPartners into sales discussions; and

(iii) The instant STOP proceeding was filed simply as an attempt by H&M to take something from dotPartners to which H&M was not entitled.

The Panel finds that the above contentions asserted by dotPartners are supported by the record. The Panel finds as additional evidence of Reverse Domain Name Hijacking the fact that H&M does not have rights in a trademark that is "identical" to the contested domain name, a requirement clearly specified by STOP Paragraph 4(a)(i). Under the circumstances, the Panel is constrained to find that H&M engaged in Reverse Domain Name Hijacking.

 

7. Decision

The Panel finds that Complainant H&M Systems Software, Inc. has not met its burden of proof under the STOP, Paragraphs 4(a)(i) Ė (iii). Therefore, the Panel DENIES the relief requested in the Complaint. Because Respondent has demonstrated on the present record that it has legitimate rights to the contested domain name, the Panel herein DISMISSES the Complaint and further holds that NO SUBSEQUENT CHALLENGES under the STOP against the <argos.biz> domain name that is the subject of this Panelís decision shall be permitted.

Further, the Panel finds that Complainant, H&M Systems Software, Inc. brought this Administrative Proceeding in bad faith and has engaged in Reverse Domain Name Hijacking.

 


 

Jonathan Hudis
Sole Panelist

Dated: July 24, 2002