Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Precedent Systems, Inc. ("Complainant"). The Respondent is Precedent Software, Inc., ("Respondent").

The domain name at issue is "precedent.com", registered with Network Solutions Inc.

The undersigned (or panelist) certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as the panelist in this proceeding.

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 23, 2000; The Forum received a hard copy of the Complaint on August 23, 2000.

On August 24, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "precedent.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 24, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@precedent.com by e-mail.

On September 22, 20000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed James Alan Crary as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Claimant.

A. Complainant

The Complainant, a Colorado incorporation, incorporated in April 1989, is the owner of the trademark "PRECEDENT" issued in July 1985 by the United States Patent and Trademark Office. Complainant sells legal accounting system software packages and seeks upon transfer of the disputed domain precedent.com to promote its products and provide web-based data collection services to law firms.

Respondent operates its business in a similar field selling computer software and programming services. Respondent registered the domain name precedent.com on January 12, 1996. This was subsequent to a 1995 contact by Chris Akeley seeking a demonstration of Complainant’s legal accounting system. Complainant believes this is the same Akeley who is the owner of Precedent Software and that he had prior knowledge of Precedent Systems existence and it’s product. This contact took place when Complainant’s trademark registration was then pending before the U.S. Trademark and Patent Office.

In June 1999 Complainant demanded respondent cease and desist from its use of the "PRECEDENT" trademark. A domain name dispute case was brought before Network Solutions under the then existing rules. In order to dissolve the dispute, Respondent chose to use its innermotion.com dot.com name for all its businesses effective October 1, 1999.

Despite negotiations to arrange for the transfer of the disputed domain name, Respondent had failed to do so and therefore Complainant sought a transfer of the disputed domain to name to it.

Complainant maintained that the disputed domain name and the trademark were identical. The Respondent had no legitimate interest in the domain name. Since it was no longer actively doing business under the Precedent Software, Corporation name, it had abandoned the name.

Bad faith was alleged on the grounds that the original registration violated the terms of the Network Solutions license agreement in that Respondent knew the existence of Precedent Systems and made no effort to determine whether they were violating the trademark rights of Complainant. In addition, it was maintained that the only motivation at this time was to profit from the sale of the domain name above and beyond out-of-pocket expenses.

B. Respondent

Respondent maintained that before any notice to it concerning the dispute, Respondent was engaged in offering services in software development under the precedent.com domain name on a daily basis. This continued until October 1999 when the name was changed to innermotions.com. Thereafter the site was maintained as a reminder of the name change until July 28, 2000. During 1999 Respondent received over 300 e-mails using the precedent.com domain name.

Respondent denied that it had abandoned the domain name since it was no longer actively doing business under the Precedent Software, Corporation name.

Respondent maintained it changed its name from Precedent Software, Inc. to Innermotion Web Development in October 1999 in the face of threatened trademark infringement litigation by Complainant.

After July 2000 in response to a demand by Complainant the web page at www.precedent.com was changed to read "under construction".

Respondent further noted that there were fourteen holders of trademark in the word "precedent". None of these marks including the Complainant’s dealt specifically with development services therefore Respondent believed it’s use of the phrase "precedent software" was legally permissible. Respondent maintained that it’s registration and use of the disputed domain name was legitimate and not in violation of the policy. The policy does not effect the orderly disposal of legitimate corporate assets such as a domain name.

Respondent maintained the complaint was lodged in bad faith. Complainant had no Internet presence to provide a basis for confusion of Internet users. It was not actively marketing any product on the Internet and had refused an offer of reciprocal links.

The domain name precedentsystems.com was currently available to be used by Complainant and had been throughout the dispute. A search for the term "PRECEDENT" in Yahoo or Alta Vista yielded links to Respondent but no mention of Complainant.

In communications by Complainant to Respondent, Complainant admitted not being actively engaged in marketing of their product. Their product was initially marketed by Tandy, Corporation/Radio Shack in the early 1980’s. Complainant was living off the income of the old user base until a Java version of the legal accounting software could be marketed. The current product was DOS text based and not particularly marketable. Respondent asserted that it had superior rights to Complainant regarding the disputed domain name.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

It was clear from the record that the disputed domain name precedent.com was identical to Complainant’s trademark. Complainant established the first element necessary to establish an abusive registration under the Policy.

The Respondent’s assertion that it has conducted business in software development under the disputed domain name since January of 1996 is essentially unrebutted. The evidence was insufficient to draw a conclusion as opposed to an inference with regard to Complainant’s assertion that Respondent had prior knowledge of Complainant’s existence and it’s products in the legal accounting software field.

It did appear from the evidence that while both Complainant and Respondent engage in the computer software business, they offer services or products in distinctly different areas. Complainant’s product line is limited to marketing a legal accounting software on floppy disks. Respondent is engaged in developing software applications for internet site development.

The issue to be determined is whether Respondent has no rights or legitimate interests in respect of the domain name. On the basis of Respondent’s submissions the Panel concluded that it has used and traded using the Precedent Software, Inc. corporate name and the precedent.com domain name for services and goods which are different from those in which Complainant shows trading rights.

The word "precedent" is descriptive in nature. Complainants limited trademark right in the area of legal accounting software does not extend to other kinds of goods and services. This is clear from the many trademarks which incorporate the word "PRECEDENT" as part of the mark. The record in this case did not support that Complainants trademark had developed a secondary meaning associated with Complainant; rather it supported a contrary finding. Fuji Photo Film Co. Limited and Fuji Photo Film USA, Inc. v. Fuji Publishing Group LCC D2000-0409 (WIPO July 2, 2000).

The Complainant and Respondent are not competitors, one offers an accounting software product to the legal community, and the other works with clients developing specialized software applications which have nothing to do with the legal field.

The evidence here supported a finding that for at least three years prior to notice of a dispute Respondent was using the domain name in connection with a bona fide offering of goods or services. Thus respondent has established rights to and legitimate interests in the domain name number Policy 4c(i).

Since the Complainant failed to meet the burden of proof in respect to paragraph 4(a)(ii) it is not necessary for the Panel to consider whether or not the Respondent has registered or is using the domain name in bad faith.

The Respondent asserted that the Complainant had brought the action herein in bad faith in the effort and thus force the transfer of the disputed domain name to Complainant. Based on review of submitted materials, it was felt by this panelist that the evidence was insufficient to support a finding of bad faith on the Complainant’s part.

Based on the above findings and conclusions, it was determined that Complainant had failed to establish an abusive domain name registration within the meaning of Section 4(a) of the Policy and thus was not entitled to relief under Section 4(i) of the Policy, it is therefore ordered that the Respondent retain the disputed domain name precedent.com