DECISION

Apian Software, Inc. v Scott M. Smith & Associates, Inc.

Claim Number: FA0104000097019

PARTIES

The Complainant is Apian Software, Inc., Seattle, WA, USA (“Complainant”). The Respondent is Scott M. Smith and Associates, Inc., Provo, UT, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

The Panelists each certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Panelists are Hon. Edmund P. Karem (Ret.), Hon. Charles K. McCotter, Jr. (Ret.) and Hon. Karl V. Fink (Ret.) as Chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 3, 2001; the Forum received a hard copy of the Complaint on April 4, 2001.

On April 4, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "surveypro.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 2001 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@surveypro.com by e-mail.

A timely response was received on April 30, 2001. Thereafter a Reply was submitted by Complainant to which Respondent submitted a Reply. All submissions by the parties have been considered.

On May 10, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Edmund P. Karem (Ret.), Hon. Charles K. McCotter, Jr. (Ret.) and Hon. Karl V. Fink (Ret.) as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Survey Pro is a survey design and analysis software product which was first released in 1991. Apian Software, Inc. holds a registered trademark for the term “Survey Pro”, and has manufactured and sold this software product since 1991. Survey Pro is a software program for designing questionnaires, collecting data and producing reports.

Apian Software, Inc. attempted several years ago to obtain the surveypro.com name, but the name was taken by an organization which demanded a sum of money for its purchase considered to be excessive by Apian Software, Inc. Because the owner of the surveypro.com name was not using it. Apian did not pursue action.

The Respondent purchased the domain name in July of 2000, and also applied for a trademark in July of 2000, on the term “surveypro.com”. In July 2000, Mr. Smith began selling his product “SurveyPro”- software which allows the user to design online surveys, gather data and generate reports.

Respondent did not apply for a registration on the name “surveypro.com” until purchasing the domain name, thus it is clear that there were no pre-existing interests in his use of the name “surveypro.com” until he had purchased the domain name. The Respondent also attempted a trademark on the name “SURVEYPRO” via an amendment to the application, In his application, the Respondent affirms that his first use was July 6, 2000.

In July of 2000 Apian became aware from phone calls from several confused customers that surveypro.com was offering a similar software product.

The Respondent continues to use both Surveypro as a product name and surveypro.com as a means of marketing this product.

On September 7, 2000 Apian Software’s attorney issued a Cease and Desist letter to the Respondent.

B. Respondent

surveypro.com was purchased at significant cost from its registered agent Survey America, a market and public opinion research company doing business in the greater Los Angeles, CA. Area. The date of purchase was July 5, 2000.

The purchase of surveypro.com was made in good faith and at significant expense for purpose of conducting a bona fide commercial business that was in existence prior to knowledge of Apian Software or its product.

The USPTO has found SurveyPro.Com, Inc.’s trademark application for SurveyPro to have no conflict with other registrants, including Apian Software’s trademark.

The website surveypro.com is owned and operated by SurveyPro.Com, Inc., a service organization incorporated in the State of Utah.

SurveyPro.Com, Inc., as a corporation and through its website surveypro.com , accrues revenue through consulting services (Primarily data collection and advanced analytics), through the hosting of third level domain name URLs for client surveys, and through the rental of database warehouse space on its servers.

Apian’s software products are distinctly different from the services offered at surveypro.com . These offerings are not confusing in either use or form, especially to the educationally sophisticated members of the different markets being served.

We were not aware of the existence of Apian Software or their product.

As the Complainant indicates, the surveypro.com web site was operational and used in good faith prior to the first demand from Apian’s attorneys that the domain name be turned over to them (September, 2000) and prior to the first ICANN notification of dispute.

The founders of SurveyPro.Com have made use of the generic terms “Survey” “Pro” and “Professionals” separately and in combination for many years. The web site surveypro.com is recognized as an online source for the professional survey services offered and the website services thousands of users from throughout the world.

The web site surveypro.com is being used since July, 2000 for commercial use and as a service to academic institutions for student and faculty research activities. Services are provided to these institutions at no charge.

C. Additional Submissions

Complainant

There is both actual and potential confusion. Both Respondent, its predecessor, and Complainant have reported instances of customer contacting them and telling them they were confused by the surveypro.com site when they were looking for Apian’s Survey Pro product.

The Respondent argues that it has rights in the mark and its registration and use was not in bad faith. But that is not the issue where the original registrant of the domain name had no rights and acted in bad faith, and then after a complaint, transferred the domain name to another.

The doctrine protecting a bona fide purchaser without notice does not help Respondent, because it had constructive or actual notice of the defects in its predecessor’s registration and use. Respondent had a duty to determine if its registration infringed on any mark. To comply it had to make reasonable inquiry of the seller and check readily available research sources.

The original registrant did not have any existing interest in the mark. There is no evidence that Mr. Spiegalman’s purported company ‘Survey Pro’ ever existed. California state public records show no one was incorporated or registered in California as business under the name “survey pro” or “surveypro”.

Respondent has continued to use the mark in bad faith. The Complaint, Response, Reply exhibits and Kitwin affidavit show that the Respondent’s use of disputed domain name in fact causes customer confusion with the Complainant’s mark.

Respondent asserts that the website at surveypro.com is owned and operated by SurveyPro.Com, Inc., a Utah corporation. However, the disputed domain name surveypro.com is registered to Respondent Scott M. Smith & Associates, Inc. If Respondent’s rights in the disputed domain name have been transferred to SurveyPro.Com, Inc., that must have occurred after SurveyPro.Com, Inc.’s incorporation on October 10, 2000, which was after Apian’s September 2000 complaint to Respondent.

Respondent

Complainant did not, provide any evidence of customer confusion or that this was Respondent’s intended design.

There are many other enterprises that use the same term, as in the case of “Survey Pro”, one cannot conclude that Complainant must necessarily be the special target.

The Complainant’s statement that the Respondent used the domain name surveypro.com in connection with a bona fide offering of goods and/or services is essentially an admission that at the time of registration, the Respondent acted in good faith.

As a purchaser of a domain name, the Respondent is within his rights to secure a domain name, develop products and seek funding prior to a full commercial launch of the web site under the domain name.

Pending trademark applications can establish rights in a mark. We have been found to have “No Conflict” and have filed the corrections requested by the examiner for application 78/028510.

FINDINGS

For the reasons stated below, the Panel finds that Complainant has proven that the domain name at issue is identical or confusingly similar to Complainant’s mark. However, Complainant has not met its burden of proof that Respondent has no legitimate interest in the domain name and that the name was registered and being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”

Paragraph 4(a) of the 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.

Identical and/or Confusingly Similar

Complainant, Apian Software, Inc., owns the registered mark SURVEY PRO, which it has used in connection with its survey design and analysis software product line since 1991.

The Panel finds that Respondent’s domain name, surveypro.com, is identical to Complainant’s well-established mark. See Football Ass’n Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) (finding that domain name "facup.com" is clearly identical to the FA CUP trademark belonging to Complainant); see also Minnesota Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998) ("post-it.com" and "Post-It" are the same); Brookfield Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036, 1055 (9^th Cir. 1999) (differences between the domain name "moviebuff.com" and the mark "MovieBuff" are inconsequential).

Complainant has proven this element.

Rights or Legitimate Interests

Scott M. Smith and Associates , Inc. is the holder of the domain name and also is the applicant for the trademark with the USPTO. Scott M. Smith and the two corporations are inter-related and the use of the domain name by SurveyPro.Com, Inc. may be considered in determining whether Respondent has any rights or legitimate interest.

The USPTO response regarding Respondent’s USPTO application Serial No. 78/028510 for the trademark designation SURVEYPRO shows a finding of no similar registered or pending mark which would bar registration.

Pending trademark applications can establish rights to a mark. See MatchNet PLC v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000)) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); SeekAmerica Networks, Inc. v. Tariq Masood and Solo Signs, D2000-0131 (WIPO April 13, 2000) (concluding that rights in a mark can be established by pending trademark applications).

As a purchaser of domain name, the Respondent is within his rights to secure a domain name, develop products and seek funding prior to a full commercial launch of the web site under the domain name.

Respondent claims that it is using the disputed domain name in connection with online survey hosting, which is a legitimate or fair use. See Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that Respondent has rights and legitimate interests in the domain names in connection with its business based on the acquisition, re-conditioning and re-sale of used Kittinger furniture); see also Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where Respondent sought to develop a bona fide business use for the domain name).

Also, Respondent offers information services to academic institutions free-of-charge. See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the domain name where she was using the domain name in connection with a noncommercial purpose); see also Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding rights and legitimate interests in the domain name, portofhelsinki.com, where Respondent was using the domain name to provide information about services available in different ports around the world).

Complainant has not proven that Respondent has no legitimate interest in the domain name.

Registration and Use in Bad Faith

The Panel finds that the alleged bad faith in registering and using the domain name by the original registrant is not relevant to these proceedings. There is no showing there was any connection between the original registrant and the present registrant and no allegation that there is any such connection. The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy deals with the present registrant and the history with an earlier registrant under the facts of this case is not relevant.

The disputed domain name is comprised of generic terms See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

Respondent registered the disputed domain name in good faith for a legitimate non-infringing purpose. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

Complainant has not proven this element.

DECISION

The panel directs that the domain name surveypro.com remain with the Respondent.

Panel: Hon. Edmund P. Karem (Retired)

Hon. Charles K. McCotter, Jr. (Retired)

Hon. Karl V. Fink (Retired)

Dated: May 24, 2001

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