WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cloudmark, Inc. v. Dave Lahoti and Interspectrum

Case No. D2003-0797

 

1. The Parties

The Complainant is Cloudmark, Inc., a corporation organized under the laws of the State of Delaware, having its principal place of business in San Francisco, California, United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.

The Respondents are Dave Lahoti and Interspectrum, giving an address in Tustin, California, United States of America, represented by The Law Offices of Brett P. Wakino, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <spam-net.com> and <spamnet.org> are registered with Tucows, Inc. (hereinafter "Tucows" or the "Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2003. On October 9, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On October 9, 2003, Tucows transmitted by email to the Center its verification response, confirming that the Respondent Interspectrum is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 the proceedings commenced October 16, 2003. In accordance with the Rules, paragraph 5(a), November 5, 2003, was established as the due date for the Response. The Response was filed with the Center November 6, 2003.

The Center appointed M. Scott Donahey, Sally M. Abel and David H. Bernstein as panelists in this matter on November 20, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On November 25, 2003, the Panel requested that the Center forward to the Panel the Supplemental Submission ("Complainantís Reply") and the Objection thereto, so that the Panel could determine whether to consider the Supplemental Submission. On November 26, 2003, the Center forwarded the requested documents.

The time in which the Panel is to issue its Decision was extended to December 11, 2003.

Because the Supplemental Submission would not contribute in any way to the decision of this matter, the Panel determined that it would not consider for any reason the Supplemental Submission.

 

4. Factual Background

On August 11, 2003, the Complainant applied for the SPAMNET mark for use in conjunction with computer software for detecting, filtering, monitoring, reporting, blocking, removing, and preventing unsolicited bulk, unwanted or content-inappropriate electronic mail, data, sounds, and images. Complaint, Annex 3. The application was filed with the United States Patent and Trademark Office ("USPTO") and showed a first use in commerce of June 19, 2002. Id.

On June 19, 2002, Complainant introduced its new anti-spam software "SpamNet." The announcement was picked up by the national media and published by media companies such as the Wall Street Journal Online and ABCNews.com. Complaint, Annex 4. In less than a month other national media began printing favorable reviews of the SpamNet product. Id.

Complainant conducted a Google search for "spamnet" which yielded more than 20,000 hits, virtually all of which referred to Complainant or its product. Complaint, Annex 5.

On January 24, 2000, Complainant registered the domain name <spamnet.com>, which name resolves to a web site at which Complainantís "SpamNet" product is offered for sale and download. Complaint, Annexes 6 and 7.

Complainant argues that Respondent Dave Lahoti is the principal behind the business Interspectrum and owns the post office box to which mail addressed to Interspectrum is sent. A Response has been filed on behalf of the named Respondents, and the Response does not deny the above allegations. In fact, the Response treats both respondents as one entity and speaks only of the "Respondent." Therefor, hereinafter the Panel will use "Respondent" to refer to the Respondents jointly and severally.

On June 26, 2002, within one week following Complainantís announcement of the introduction of the "SpamNet" product, Respondent registered the domain name <spamnet.org>. On February 18, 2003, some eight months after Complainant had been selling its "SpamNet" software, Respondent registered the domain name <spam-net.com>. Respondent is using the domain names at issue to link to a web site at "www.spamcop.com". At that web site products called "SpamCop" and "Spam Inspector" that are directly competitive with Complainantís "SpamNet" are offered for sale. Complaint, Annex 9.

Respondent has also registered over four hundred other domain names that include the trademarks of other companies, such as <nissan.org>, <kraftonline.com>, <fredericks-of-hollywood.com>, <1800mattress.com>, and <ebays.com>, among others. Complaint, Annex 10.

Respondent contends that the registered trademark SPAM belongs to the Hormel Foods Corporation and that Hormel Foods Corporation opposes all registrations that include SPAM in a proposed mark. Respondent attaches several articles that deal with Hormelís suit against the holders of the SPAM ARREST mark, a lawsuit that is apparently still pending. Response, Annex 1.

Respondent also attaches several printouts that show that a number of trademark applications to the USPTO using the term "spam" in proposed marks have been opposed. Response, Annex 2

Respondent also cites several actions brought under the UDRP by the Hormel Foods Corporation against respondents who have used "spam" as part of a Second Level Domain Name ("SLD").

Respondent contends that if any common law rights exist in the SPAMNET mark that the rights belong to Respondent, since Respondent registered the domain name <spamnet.org> that had been previously used by an entity known as the IRC Network. Respondent produces archival evidence that the IRC Network had used the domain name <spamnet.org> to resolve to a web site that dealt with the subject of spam and served as a chat room. Response, Annexes 3 and 4.

Respondent contends that its rights date back to October 1999, when the IRC Network allegedly acquired rights in the domain name <spamnet.org>. However, no evidence has been produced as to this acquisition date, nor is there any evidence that Respondent is entitled to relate its rights in the domain name back to any usage by IRC Network.

Respondent also contends that the term "spamnet" is a generic term. However, Respondent offers only argument, not evidence, in support of this contention.

Respondent claims to be a registered domain name registrar and a "developer of spam reporting and complaint service."

Respondent requests that the Panel find that Complainant is engaging in reverse domain name hijacking.

 

5. Partiesí Contentions

A. Complainant

Complainant alleges that the domain names at issue are identical or confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of such a mark, and that Respondent has registered and is using the domain names at issue in bad faith.

B. Respondent

Respondent alleges that Complainant has no rights in respect of a trademark and no chance of obtaining same, since Hormel Foods Corporation is sure to oppose Complainantís trademark application. Respondent alleges that it has rights and legitimate interests in respect of one of the domain names at issue derived from the prior use of the domain name by the IRC Network. Respondent alleges that it has registered and is using the domain names at issue in good faith. Respondent requests that this Panel issue a finding of bad faith, reverse domain name hijacking.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) that the Respondent has no rights or legitimate interests in respect of the domain names; and

3) that the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Respondent contests Complainantís rights in the alleged mark. It is undisputed that Complainant has applied for a trademark, but action on that application is still pending. It is well established that a UDRP Complainant may establish rights in a mark by virtue of the common law, as well as by registration. UDRP Panel decisions have held that an application for registration coupled with use in the United States gives a Complainant rights in the mark for purposes of the UDRP. Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Respondent also argues that Complainantís mark is generic in nature or at best merely descriptive. However, Respondent has produced no evidence of this, and Respondentís allegation is based on supposition and argument only. In any event, the results of Complainantís Google search are more than adequate to counter Respondentís claim in this regard. 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223 (concurring opinion).

Respondentís domain names include in its entirety Complainantís mark, in one case with a hyphen inserted. The insertion or elimination of a hyphen in a domain name cannot avoid a finding of identical similarity. EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 (<efg-private-bank.com>); Chi-chiís, Inc. v. Restauran Commentary (Restaurant Commentary), WIPO Case No. D2000-0321 (<chichis.com>). Because the domain names in question incorporate Complainantís mark, the Panel finds that the domain names are identical to a mark in which Complainant has rights. Wal-Mart Stores v. Richard MacLeod, d/b/a For Sale, WIPO Case No. D2000-0662.

B. Rights or Legitimate Interests

Respondent argues that it has rights and interests in respect of the domain name, because it has acquired all rights titles and interests, including any common law trademark rights in the domain name <spamnet.org> from the previous registrant of the domain name, the IRC Network. However, Respondent offers no evidence as to how or in what way it has acquired the "rights, titles and interests" that the IRC Network is alleged to have had in a common law trademark for SPAMNET.ORG, nor does it offer any evidence that IRC Network ever had any such common law trademark rights. Respondent only attempts to show that in the past the domain name <spamnet.org> had belonged to the IRC Network and on June 26, 2002, it was registered by Respondent.

This is insufficient to establish any rights or interests in respect of the domain name <spamnet.org>. Respondent offers no evidence as to the domain name <spam-net.com>.

C. Registered and Used in Bad Faith

Respondent first argues that the term "spamnet" is merely descriptive. As discussed, above, in Section 6A, Respondent has failed to establish the generic or descriptive nature of the term "spamnet," and even had Respondent been able to do so, Complainant has introduced sufficient evidence of the acquisition of secondary meaning.

Respondent next argues that the term "spamnet" was being used as part of a domain name by the IRC Network, before it had ever been used by Complainant. As discussed above, in Section 6B, Respondent failed to establish what rights, if any, the IRC Network acquired by the use of the domain name <spamnet.org>, nor how any such rights passed to Respondent by the mere registration of the same domain name.

Neither the IRC Network, nor the Hormel Foods Corporation is a party to this proceeding. Whether their rights or interests in the domain names at issue might be superior to those of Complainant is not before us. The only parties before the Panel are the present Complainant and Respondent. It would be improper for the Panel to consider or to weigh the interests of third-parties in deciding the present dispute. See dissent in First American Funds, Inc. v. Ult. Search, Inc., WIPO Case No. D2000-1840. As previously discussed, Respondent has failed to demonstrate that Respondent has rights and interests in respect of the domain name at issue. Respondent cannot bootstrap the alleged rights and interests of others in order to overcome a showing of bad faith.

Finally, Respondent asserts that it is making a fair use of the domain names at issue to "demote spam," an effort that is in the public interest. The Panel begs to differ. Respondent is using the domain names at issue to link to a web site on which Respondent offers for sale products directly competitive with the "SpamNet" product sold by Complainant. Thus, Respondent is intentionally attempting to attract users to its web site, for commercial gain, by creating a likelihood of confusion with Complainantís mark. This comes squarely within paragraph 4(b)(iv) of the Policy and is conclusive evidence of bad faith registration and use.

D. Reverse Domain Name Hijacking

Because the Panel finds for the Complainant, there can be no reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <spam-net.com> and <spamnet.org> be transferred to the Complainant.

Respondentís request for a finding of reverse domain name hijacking is denied.

 


 

M. Scott Donahey
Presiding Panelist

Sally M. Abel
Panelist

David H. Bernstein
Panelist

Dated: December 11, 2003