WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ICTSecure AG, ICTsecure Inc, CyberStor GmbH v. Roger Clive Crews
Case No. D2008-1018
1. The Parties
The Complainant is ICTSecure AG, Switzerland, ICTsecure Inc, United States of America, CyberStor GmbH, Switzerland, represented by its internal counsel.
The Respondent is Roger Clive Crews, Salisbury, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names, <cyberstor.net> and <ictsecure.com>, are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2008. On July 7, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On July 7, 2008 , GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 21, 2008. 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 the proceedings commenced on July 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Response was filed with the Center on August 12, 2008.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 27, 2008. The Panel finds that it was properly constituted. 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 August 25, 2008, the Center received a supplemental filing from the Complainant. In reply to that supplemental filing, the Respondent filed an additional submission with the Center on August 29, 2008. However, the Policy and Rules (paragraph 12 of the Rules) do not provide for the filing of additional materials beyond the Complaint and Response unless the Panel authorizes it, and the Panel does not here consider these supplements in rendering its decision. The Panel finds the parties have had a fair opportunity to present their cases within their initial filings in this proceeding, and the Panel does not need information beyond the Complaint and the Response. For that same reason, the Panel does not consider further submissions made by the Respondent on September 5, 2008 and by the Complainant on September 8, 2008. The Panel further notes that several communications were received from a third party apparently acting on behalf of CyberStor GmbH. For the reasons mentioned above, the Panel does not consider these in rendering its decision.
4. Factual Background
The Respondent registered the disputed domain names, <cyberstor.net> and <ictsecure.com> on June 3, 2003 and September 17, 2003, respectively.
5. Parties’ Contentions
In 1995 the Complainant, a Swiss company, developed a security process called “Cyberstor”. Because another company owned a domain name similar to the name used by the Complainant for its process, the Complainant could not obtain a service mark registration reflecting that name. However, the Complainant obtained a copyright for that name and registered the disputed domain name <cyberstor.net>.
Subsequently, the Complainant developed the mark ICTSECURE to cover its activities. The Complainant incorporated under this new name in the United States of America, the United Kingdom of Great Britain and Northern Ireland and Switzerland, and registered the disputed domain name <ictsecure.com>.
The Respondent was employed by the Complainant as a consultant involved in the development of the websites connected with the Complainant’s domain names and possessed access codes to both websites.
The Complainant retains all rights in both its CYBERSTOR and ICTSECURE marks and their usage in the disputed domain names, which have been usurped by the Respondent. Those names are identical to the Complainant’s marks.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
Pursuant to verbal agreements, the Complainant reimbursed the Respondent appropriately for his services. However, upon the Complainant’s hiring of another consultant, the Respondent, using the access codes in his possession, assumed personal registration of the disputed domain names. He has not altered the websites at the domain names, which reference the Complainant’s marks without license from the Complainant.
The Respondent has not made any demonstrable preparations to use the disputed domain names, except previously on the Complainant’s behalf, and is not commonly known by either of those names. The Respondent’s main motivation is to tarnish the Complainant’s marks.
The disputed domain names were registered and are being used by the Respondent in bad faith. The Respondent is attempting to disrupt the Complainant’s business, having already caused clientele confusion. Because it was forced to discontinue conducting business at the disputed domain name, <ictsecure.com>, the Complainant had to register the domain name, <ict-sec.net>.
The Complainant has taken legal action against the Respondent for passing himself off as the Complainant.
The Respondent has never provided services of any kind to the Complainant. The Complainant’s principal, Mr. Smith, was a salesman working with the CyberStor brand system for the ICTSecure PLC company.
The Complainant’s corporate structure, as described by the Complainant, is seriously in question and probably does not exist in good standing. It has no employees, assets or customers, but is fully embodied in Mr. Smith himself.
The Complainant holds no patents and never had ownership of the CyberStor process.
The Complainant has filed inconsistent statements with the Center as to the rationale behind its claimed attempt to register the two disputed domain names.
The company, ICTSecure PLC, was formed on September 15, 2003, and Respondent, a principal in that company, registered the disputed domain name, <itcsecure.com>, on September 17, 2003. The Respondent has no expertise in website construction, and attached only simple sites to that disputed domain name for interim use.
Having found the domain name <cyberstor.com> already registered, the Respondent registered the disputed domain name <cyberstor.net> in good faith pursuant to his legitimate interest in the corresponding product line on June 3, 2003. Subsequently, Mr. Smith became essentially a salesman of the CyberStor products, which were marketed later by ICTSecure PLS. The “Cyberstor process,” such as it is, was never transferred to the Complainant.
It was only after December 2005 that Mr. Smith requested that the Respondent become a director of the Complainant, which request the Respondent rejected although he accepted the courtesy title “Director.”
The evidence of payment to the Respondent of 5,000 pounds represents a partial payment of a debt owed the Respondent by Mr. Smith, and not remuneration for any services rendered to the Complainant by the Respondent.
The suspension in use of the websites located at the disputed domain names was the result of the Complainant’s use of a rival website at <ict-sec.com> to sell the CyberStor system. It was the Complainant not the Respondent that caused customer confusion.
The Respondent has never attempted to pass himself off under assumed identities in the registering of the disputed domain names.
The Complainant is guilty of attempted reverse domain name hijacking.
6. Discussion and Findings
Paragraphs 4(a)(i) through (iii) of the Policy require that the Complainant prove each of the following three elements to obtain an order that the disputed domain names, <cyberstor.net> and <ictsecure.com>, be transferred to it:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names were registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
In a Policy proceeding, a complainant must first establish its rights in either a trademark or service mark. In this case the Complainant has failed to present the Panel with a valid registration from any country for any mark whatsoever. Instead, the Complainant seeks to rely on a common law claim to rights in two service marks as a basis for its case.
Prior UDRP panels have recognized a complainant’s possession of common law trademark or service mark rights as sufficient to satisfy the initial requirement set forth in paragraph 4(a)(i) of the Policy. See for example Artistic Pursuit LLC v. calcuttawebdevelopers.com, NAF Case No. 894477 (“…a trademark registration is not required by Policy [paragraph] 4(a)(i) and Complainant can rely on its common law rights to establish rights pursuant to Policy [paragraph] 4(a)(i).”); and The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516.
However, in this case, the brief and threadbare Complaint does not include clear evidence that might convince the Panel of such common law rights. There is no record, beyond bald assertions, of long or sustained use of either mark, CYBERSTOR or ICTSECURE by the Complainant. Moreover, the Complainant has not furnished the Panel with any evidence of revenues, advertising expenses, promotional activities, notice in trade publications or general media, or client lists related to marketing of products or services under said marks. In short, there is absent from the Complaint all of the evidence typically used to demonstrate common law rights in a trademark or service mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions for the consensus of opinions found in prior UDRP decisions with respect to such criteria. Failing so thoroughly to provide the Panel with any requisite information, the Complainant has not made a convincing case that it possesses common law rights in either service mark to which it claims ownership sufficient to satisfy the requirements of paragraph 4(a)(i) of the Policy.
As a result, the Panel finds that the Complainant has not proved that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant owns rights.
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
Since the Complainant must prevail as to all three elements required in paragraph 4(a) of the Policy and it has failed to sustain its burden concerning the first element, the Panel need not render an opinion with respect to the Complainant’s compliance with the two remaining elements as set forth in paragraphs 4(a)(ii) and (iii) of the Policy.
C. Reverse domain name hijacking
The Respondent has requested that the Panel issue a finding that the Complainant has engaged in an attempt at reverse domain name hijacking. Clearly, the Panel has found the Complaint to be extremely weak. Moreover, there is precedent in prior UDRP decisions that a complainant’s failure to establish rights in a trademark or service mark prior to registration of the disputed domain names might give rise to such a finding. See Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609; and Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905 (“Allegations of reverse domain name hijacking have been upheld in circumstances where the registration date of the domain name at issue preceded the dates of the complainant’s trademark registration.”)
However, in this case the Panel is presented with allegations that transcend Policy considerations. Specifically, the Complainant essentially accuses the Respondent of theft, to which the Respondent replies with allegations that the Complainant has engaged in actions amounting to fraud. The Panel believes that a determination of reverse domain name hijacking would imply a ruling as to the merits of these accusations, which is beyond the capabilities of the Panel in this UDRP proceeding. Thus, the Panel will not issue any order other than with respect to the remedy requested by the Complainant for the disputed domain names, and will not find that the Complainant has engaged in reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Date: September 10, 2008