WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thrive Networks, Inc. v. Thrive Ventures, Inc.
Case No. D2003-0534
1. The Parties
The Complainant is Thrive Networks, Inc., Boston, Massachusetts, United States of America, represented by Law Offices of Peter Kelman, United States of America.
The Respondent is Thrive Ventures, Inc., Eden Prairie, Minnesota, United States of America.
2. The Domain Name and Registrar
The Domain Name is <thrive.com>, which is registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2003. On July 7, 2003, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the Domain Name and on the same day received its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing the contact details for the administrative, billing, and technical contacts. 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 on July 15, 2003. In accordance with the Rules, Paragraph 5(a), the due date for the Response was August 5, 2003. The Response was filed with the Center on August 4, 2003.
The Center appointed Timothy D. Casey (the "Panel") as the sole panelist in this matter on August 8, 2003. 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
(i) Respondent registered the Domain Name on April 29, 1995.
(ii) Respondent is a Minnesota corporation that was not of good standing as of June 25, 2003, but was of good standing as of June 30, 2003.
(iii) The registrarís verification of contact information of the Domain Name, dated July 7, 2003, lists "Hitsville" as the technical, and administrative contact for Respondent.
(iv) Complainant asserts, but has not provided any evidence, that:
(a) Complainant was founded in June 2000, and has existed for three years as a company that provides computer outsourcing services to businesses, helping them to reduce their technology costs, improve network reliability and user uptime, and reduce time spent managing internal technology.
(b) Complainant is the outsourced IT department for over 150 businesses in the Boston area.
(c) Complainant has 10-100 employees.
(d) Complainant has filed an application with the United States Patent and Trademark Office ("USPTO") to federally register the mark "Thrive" with respect to its corporate services (Serial No. 76/459,691) for "[c]omputer and networking services, including but not limited to system design, hardware and software implementation and ongoing support." The trademark application is currently being reviewed by the USPTO. (However, note Sections 4.(vi)(a) and (b), hereto)
(e) Until 2003, Respondent made no use of the Domain Name.
(f) Only after receiving a letter from Complainant did Respondent activate the website at the Domain Name, and then only by indicating that it is currently a secure site for which a password is required.
(g) Respondent lists its administrative and technical contacts as "Hitsville, Eden Prarie, Minnesota" and Complainant could find no such entity in Eden Prarie, Minnesota.
(h) Complainant has made many attempts to contact Respondent regarding Respondent's use of the Domain Name.
(i) Complainant was unable to contact Respondent based on the information provided in the Domain Name registration, and was only able to do so by locating the incorporator of Respondent, based on a search of corporate records filed with the Minnesota Secretary of State.
(j) Respondent never indicated to Complainant the nature of Respondentís use of the Domain Name or that such use was for a legitimate commercial or non-commercial enterprise, or for a legal personal use.
(v) Respondent asserts, but has not provided any evidence, that:
(a) Respondent first made use of the mark "Thrive" in the founding of a health-oriented publication in 1993.
(b) Respondent first used the Domain Name in June 1995 as an email address and has continued to use it as such since then. (See Section 4.(vi)(d) hereto.)
(c) At various times, Respondent has hosted a web presence using the Domain Name, but not consistently.
(d) When Respondentís initial line of business failed, Respondent used the name "Thrive" for a holding company to encompass a series of business enterprises.
(e) In 1997 an attempt was made to register the mark "Thrive" with the Minnesota Secretary of State, but the registration was not accepted due to the similarity of an existing mark, "THRIVE 2000."
(f) On the advice of legal counsel, Thrive Ventures, Inc. was incorporated in the state of Minnesota on May 18, 2000.
(g) Respondent continues to use both the "Thrive" mark and the <thrive.com> domain name.
(h) The administrative and technical contacts, as listed on the registrarís site, "www.godaddy.com", are both "Domain Administrator."
(i) Complainant contacted Respondent several times using the telephone number provided in the Domain Name registration. (See Section 4.(vi)(e) hereto.)
(j) Respondent telephoned Complainant on April 16, 2003, at 6:19 p.m. EST and left a three minute recorded message, specifically stating that the Domain Name was being used legitimately.
(vi) The Panelís additional, independent research revealed the following, which it accepts as fact:
(a) A search of the USPTOís Trademark Electronic Search System (TESS) as of the date of this decision showed that the mark "Thrive," under the Serial No. 76/459,691, is pending with the USPTO. The description of the goods and services as provided by TESS is as follows: "integration of computer systems and networks; monitoring the computer system of others for technical purposes and providing back-up computer programs and facilities; computer network design for others; computer software design for others; technical support services, namely, maintenance and troubleshooting of computer hardware and software problems." (This differs from the description provided by Complainant.) The TESS records indicate that the first use of the "Thrive" mark for such goods and services was June 1, 2000, and that the named applicants are "Global Equity Corp., Primary Capital Corporation & Trend Capital, Inc. JOINT STOCK COMPANY MASSACHUSETTS." Complainant has not explained the relationship between these entities and Complainant's Massachusetts corporation.
(b) The TESS records, as of the date of this decision, revealed that on July 29, 2003, a letter of suspension was emailed to Global Equity Corp. with respect to Complainant's allegedly pending trademark application, Serial No. 76/459,691.
(c) Complainant registered the domain name <thrivenetworks.com> on May 8, 2000.
(d) The Panel has independently verified that Respondent has been using the Domain Name as an email address, however, the date on which such use began could not be verified. DNS records indicate that <mail.thrive.com> is supported by a mail server operated by World Web Systems, which also provides support for the website "www.thrive.com".
(e) As of the date of this decision, the registration information for the Domain Name on the registrar's website, "www.godaddy.com" lists "Domain Administrator" as the relevant technical and administrative contact.
5. Partiesí Contentions
A Complainant's contentions
(i) Complainant contends that the Domain Name is identical to Complainant's trademark and corporate name.
(ii) Complainant argues that, since Respondent made no use of the Domain Name since its registration on April 29, 1995, Respondent has no rights in the Domain Name based on such non-use and that such non-use goes against public policy.
(iii) Complainant contends that Respondent registered and used the site in bad-faith because:
(a) Respondent's registration of the Domain Name lists the administrative and technical contact as "Hitsville, Eden Prarie, Minnesota," which entity Complainant could not locate and, consequently, Respondent, "in violation of ICANN policies and procedures...provided fictitious information to its Registering agent."
(b) Respondent is a Minnesota Corporation not in good standing.
(c) Respondent's initial Domain Name registration would not have been valid as Respondent did not become incorporated until more than five years after it registered the Domain Name.
(d) Respondent only activated the website for the Domain Name in response to a letter from Complainant, and even then only did so by securing the site so as to require a password for access.
(e) Respondent never indicated that it was making a legitimate commercial or non-commercial use of the Domain Name for an enterprise, or for a legal personal use, and such non-use without any explanation permits the inference that Respondent registered and used the Domain Name in bad faith.
B. Respondent's contentions
(i) With respect to whether the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, Respondent contends that as Complainant "was founded in 2000, and is in the business of computer outsourcing services...[i]t would be reasonable to assume that at the time of founding Complainant attempted to register the disputed Domain Name <thrive.com> and found that it was unavailable, as it was registered to the Respondent." As Complainant at that time registered <thrivenetworks.com> any subsequent or future confusion between that domain name and the disputed Domain Name was entered into knowingly by Complainant.
(ii) Respondent argues that it has legitimate rights in respect of the Domain Name because:
(a) Respondent first used "Thrive" in the founding of a health-oriented publication in 1993 and, when the initial line of business failed, used the name as a holding company to encompass a series of enterprises. Respondent was incorporated on May 18, 2000, in the state of Minnesota.
(b) After registering the Domain Name on April 29, 1995, Respondent used the Domain Name as an email address and continues use of it in this manner through the present. Also, at various times, but not consistently, Respondent has hosted a website using the Domain Name.
(c) Respondent sought to register "Thrive" as a trademark in the state of Minnesota in 1997, but could not due to the similarity of an existing mark, "THRIVE 2000."
(d) Complainant's claim that Respondent did not use the Domain Name for legitimate commercial or non-commercial activity is false and Complainant offers no support for this contention.
(e) Precedent cited by Complainant is inapplicable to the instant case.
(iii) Respondent contends that it has not registered or used the Domain Name in bad faith because:
(a) The Domain Name was registered in good faith as representative of an existing business and continues to be used in this manner.
(b) The Domain Name registrant, Respondent, has remained consistent throughout the entire period of registration.
(c) Respondent's registration of the Domain Name took place five years before the acknowledged existence of the Complainant and therefore such registration cannot fulfill the definitions of bad faith defined in the Policy.
(d) Complainant is incorrect in its statement that the administrative and technical contacts for the Domain Name are listed as "Hitsville, Eden Prarie, Minnesota." The contact information, as listed on the registrar's site, lists "Domain Administrator" as the administrative and technical contact and the current registration information is correct.
(e) There is no basis for Complainant's claim that Respondent's initial registration of the Domain Name should be invalid as Respondent was not incorporated until May 18, 2000.
(f) The information listed in the Domain Name registration is correct, and lists valid email, postal mail, and telephone contact information. Complainant did in fact contact Respondent several times using the telephone number provided in the Domain Name registration and therefore any claims of inability to contact the Respondent are ingenuine.
(g) The claim that Respondent never answered Complainant's questions concerning legitimate use is false. Respondent telephoned Complainant and left a recording stating that the Domain Name was being legitimately used.
(h) Respondent's status as a corporation of the State of Minnesota not in good standing was due to Respondent's oversight and failure to make an annual filing. The oversight was corrected and Respondent is currently a Minnesota corporation in good standing.
(iv) Respondent argues that the Panel should consider the possibility of Reverse Domain Name Hijacking "in light of several unsubstantiated and evidentially false accusations brought about by the Complainant in this proceeding."
6. Discussion and Findings
A. Identical or Confusingly Similar
(i) Complainantís Rights in the Mark
Under Paragraph 4(a) of the Policy, the Domain Name must be "identical or confusing similar to a trademark in which the Complainant has rights" (emphasis added). Here Respondentís use of the Domain Name predates Complainantís purported initial attempt at federal trademark registration by over seven years. Complainant has provided no evidence of its use of the mark "Thrive," and the trademark application bearing the Serial No. 76/459,691, for which Complainant claims to be the applicant, instead lists Global Equity Corp., along with two other entities, as the applicant. As Complainant has provided no explanation as to its connection with these entities, if any exists, the Panel may not rely upon such registration in reaching its determination. Further, as the current status of the Global Equity Corp. application is "suspended," even if this entity were related to Complainant, it is questionable whether the application will ever be granted.
Thus, the Panel elects to proceed in its evaluation of this matter on the basis of Complainantís common law rights in the mark "Thrive Networks."
(ii) Identical or Confusingly Similar
Complainant asserts that "[t]he domain name in issue is identical with the trademark of the Complainant and the corporate name of the Complainant." It is not. Complainant does not own a registered trademark for "Thrive," its pending application is suspended, and, based on the evidence presented by Complainant, its common law trademark rights appear to be limited to the "Thrive Networks" trademark, which is not identical to the Domain Name. At best, therefore, the Domain Name could only be confusingly similar, not identical, to the Domain Name.
Although Respondent did not dispute Complainantís contention that the Domain Name (absent its suffix of .com) is confusingly similar to Complainantís name, Thrive Networks, Inc., the issue nevertheless requires consideration in view of the Panelís decision to base its analysis on "Thrive Networks" instead of "Thrive." As there is sufficient similarity between the common law mark "Thrive Networks" and the Domain Name, it is possible that current Internet users could be confused by Respondent's use of the Domain Name in view of Complainant's trademark. As a matter of standing, therefore, the Panel finds Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
Nevertheless, the Panel notes that while Complainant may meet the requirements of the Policy at this time, if anything, Complainant created the conditions for the existence of confusion, not Respondent. The Panel agrees with Respondent that Complainant appears to have registered <thrivenetworks.com> on May 8, 2000, after discovering that the Domain Name was already registered. Complainant was therefore on notice, at that time, that Respondent existed and had already registered the Domain Name. Thus, even though there is confusing similarity between the mark in which Complainant has rights and the Domain Name, that confusion is solely of Complainant's own making.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has no legitimate rights in the Domain Name because it has made "no use of the Domain Name" from the time the Domain Name was registered until 2003, and that it was "[o]nly after receiving a letter from Complainant that Respondent activated the site." In response, Respondent claims that it "first used the domain name in June of 1995 as an email address, and [continues] use of it in this manner until today," and that it intermittently used the Domain Name for a web presence.
The Panel notes that Respondent has not provided any evidence of its use of the Domain Name as an email address, but that such use has been independently verified by the Panel. While the Panel does not know when Respondent first started using the Domain Name as an email address, on balance of probabilities, given that the Panel has not found reason to question the veracity of Respondentís statements, Respondent is likely to have made such use of the Domain Name since 1995. The more significant issue here is that it appears Complainant has made the common error of assuming that because there is no active website associated with the Domain Name, Respondent is not making a legitimate use of the Domain Name. Although it may not be easy to discern whether a domain name is being used for email, FTP services, or simply as a host, such uses are legitimate. See, e.g. Innotek, Inc. v. Sierra Innotek, WIPO Case No. D2002-0072 (April 22, 2002) ("FTP and Email are legitimate commercial uses and the lack of a formal web page does not detract from these real and viable commercial uses.") Compare with The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915 (September 28, 2001) ("Although domain names may be used for Internet services (e.g. FTP, email, etc) [sic], the prevalent use of domain names is as Internet world wide web addresses.")
The Panel finds that Respondent has been making, and continues to make, a legitimate use of the Domain Name and that Complainant has failed to show the requirements of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant has also failed to meet its burden of proof with respect to whether the Domain Name was registered in bad-faith. Respondent registered the Domain Name in 1995, five years before Complainant even existed as Thrive Networks, Inc. In order to find bad-faith registration, past panels have required that "at the time of registration the Respondent at the very least had the Complainant in mind." Puls Elektronische Stromversorgungen GmbH v. NetIdentity WIPO Case No. D2002-0200 (May 31, 2002) Ė this is clearly impossible in the instant case as Complainant did not exist at the time the Domain Name was registered. Although it may be possible for a domain name to later be renewed in view of the Complainant's trademark rights, and that such renewal might constitute a "registration," Complainant has not made any such allegation.
Complainant argues that the Panel should find bad faith based on Respondentís non-use of the Domain Name. The Panel finds Respondentís explanation of the context of its registration of the Domain Name, and its subsequent use for email, to be persuasive and finds no evidence of bad faith based on non-use.
Complainant further argues that bad-faith should be found based on Respondent "providing fictitious information to its Registering agent," as the listed technical and administrative contact is "Hitsville, Eden Prarie, Minnesota" Ė an entity that Complainant could not locate. Respondent is correct in stating that its registration for the Domain Name on the registrarís site lists "Domain Administrator" as the technical and administrative contact for this matter Ė the Panel has independently verified this. However, the registrar verification obtained by the Center from the registrar does, as Complainant asserts, list Respondentís administrative and technical contact as "Hitsville." The Panel cannot resolve this factual discrepancy given the information provided, other than to note that it may be the result of typographical error or a subsequent change by Respondent. In any event, inaccurate registration information is not, in and of itself, sufficient to prove bad-faith and the Panel does not find the discrepancy to be sufficient to warrant a finding of bad faith. Since both Complainant and the Center were able to contact Respondent, the inaccuracy of the information provided to the Registrar does not seem to be of significant consequence.
Complainantís assertion that Respondentís status, as a Minnesota corporation not in good standing, is somehow evidence of bad-faith has no basis whatsoever. The standing of a corporation, as shown by Respondent's rapid correction, has little to do with the day-to-day operation of the corporation, and is, by itself, insufficient to show bad-faith use of a domain name.
Neither party to this proceeding has seen it fit to completely document the course of the correspondence between the parties in its submission to this Panel, therefore this Panel is not in a position to respond to Complainantís assertions that: (i) "[i]t was only after receiving a letter from Complainant, inquiring about the status of the Domain Name, that the Respondent activated the website at the Domain Name and only by requiring password for access"; and (ii) that "[a]t no time, has Respondent indicated to Complainant the nature of Respondentís use or that such use is for a legitimate commercial or non-commercial enterprise, or for a legal personal use."
The Panel finds that Respondent has not registered or used the Domain Name in bad-faith, as is required under Paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Hijacking
Under Paragraph 1 of the Rules, Reverse Domain Hijacking is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." In the instant case, it appears that Complainant is misinformed as to what constitutes legitimate use and has failed to make a case for Respondent's bad-faith registration or use of the Domain Name. The Panel does not find these factors sufficient to justify a charge of Reverse Domain Name Hijacking and, accordingly, dismisses Respondent's allegations to that effect.
The Panel concludes that Complainant has not shown any of the requirements of Paragraph 4(a) of the Policy and therefore, for all the foregoing reasons, the Complaint is denied.
Timothy D. Casey
Date: August 26, 2003