WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Systemware, Inc. v. Direct Privacy ID F9F0A (“Direct Privacy”) and Gene Volovich
Case No. D2011-0724
1. The Parties
The Complainant is Systemware, Inc. of Addison, Texas, United States of America, represented by Carstens & Cahoon, LLP, United States.
The Respondent is Direct Privacy ID F9F0A (“Direct Privacy”), and Gene Volovich of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Connecticut of the United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <cite.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2011. On April 27, 2011, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On April 28, 2011, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2011. The Response was filed with the Center on May 27, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 9, 2011. 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.
4. Factual Background
The Complainant operates a business which provides database management software for use in document and content management, computer hardware development, computer software development, consulting services in the field of cloud computing, and consulting services in the field of design, implementation and use of computer hardware and software systems for others.
The Complainant has filed a trademark application for the mark CITE in the United States of America under Serial No. 85-269955 (filed March 17, 2011).
The Respondent Gene Volovich registered the domain name <cite.com> on March 26, 1997. The disputed domain name currently reverts to a website which is under construction.
The Respondent Volovich operates a business called Cité Consulting, and has been providing technology consulting services since 1997. In 2004, the Respondent expanded his business services to include marketing and public relation services.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant has applied for the trademark CITE in the United States of America Trademarks Office on March 17, 2011. The Complainant contends that the domain name <cite.com> is identical to the Complainant’s applied for trademark CITE. The Complainant submits that it has common law rights in the CITE trademark dating back to February, 2011 and has invested a significant amount of money to promote its business and trademark.
Rights or Legitimate Interests
The Respondent has no legitimate right or interest in the disputed domain name. The Respondent is not commonly known by the name CITE, and was never authorized or licensed by the Complainant to use the Complainant’s CITE trademark. Furthermore, the Respondent is making a bona fide use of the disputed domain name.
Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent’s passive use of a confusingly similar domain name; and (ii) the Respondent’s use of a privacy shield to hide its identity.
The Respondent Volovich submits that he registered the disputed domain name fourteen years before the Complainant began to operate its business and applied to register the CITE trademark. The Respondent further claims that he has been operating a business under the name Cité Consulting since 1997 providing technology consulting services. The Respondent therefore submits that his common law rights in the CITE mark pre-date the Complainant’s trademark rights.
The Respondent contends that there are many domain names that contain the word “cite”, which is a common word in the English language.
The Respondent submits that he registered the disputed domain name in good faith and has used the <cite.com> domain name for fourteen years. The Respondent did not register the disputed domain name to create confusion with the Complainant, and in fact the services offered by his business are sufficiently different from the services offered by the Complainant.
The Respondent also contends that the Complainant is attempting to hijack the Respondent’s domain name because the Complainant developed a product called Cite only to discover the domain name <cite.com> was already in use.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have common law trademark rights in the mark CITE by virtue of United States of America Trademark Application No. 85-269955. The ambit of protection for those common law rights is limited, because the period of use is short.
Notwithstanding the restricted scope of common law rights, the Panel finds that the domain name <cite.com> is identical to the Complainant’s trademark CITE, except for the addition of the “.com” designation.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
After reviewing the evidence in the Complaint and the Response, the Panel is not prepared to find that the Respondent lacks legitimate rights and interests in the disputed domain name. The Respondent filed evidence that it began operating a business under the name Cité Consulting in 1997. The screen-shot of the Respondent’s website on Wayback Machine (Annex 1) is supporting evidence of the Respondent’s business operating on December 12, 1998. Annex 2 and 3 of the Respondent’s Response further support the existence of a legitimate business offering bona fide goods and/or services as of December, 2004. The fact that the website at <cite.com> is currently under construction does not mean that the Respondent passively owns the disputed domain name in bad faith.
The fact that the Respondent registered the disputed domain name fourteen years before the Complainant began operating its business under the trademark CITE is on the record evidence of rights and legitimate interests on the part of the Respondent for this Panel.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirement under paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
In view of the Panel’s finding with respect to paragraph 4(b) of the Policy, it is not necessary for the Panel to find on the merits of paragraph 4(c).
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Dated: June 23, 2011