1. Parties and Contested Domain Name

The Complainant is A Prompt Corporation, of Lehigh Valley, Pennsylvania, USA. The Respondent is APrompt Computers, Inc. of Chattanooga, Tennessee, USA. The domain name at issue is <aprompt.com>. The registrar is Bulkregister.com, Inc.

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution’s Website on April 23, 2001. The hardcopy of the Complaint Form and annexes were received on April 26, 2001.Payment was received on April 23, 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

1. Confirm the identity of the Registrar for the contested Domain Name;

2. Verify the Registrar’s Whois Database and confirm all the essential contact information for Respondent;

3. Verify if the contested Domain Name resolved to an active Web page;

4. Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is BULKREGISTER.COM, INC., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on April 23, 2001. The requested information was received May 3, 2001.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under Paragraph2(a) in forwarding the Complaint to the Respondent, notifying theComplainant, the concerned Registrar and ICANN on May 4, 2001. This date is the official commencement date of the administrative proceeding.

All emails were delivered. The fax to the Respondent’s Technical contact found on the Better Whois was the only unsuccessful fax.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.

On May 24, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on May 24, 2001.

On May 29, 2001, the Clerk’s Office contacted Jordan Weinstein, and requested that he act as panelist in this case.

On June 4, 2001, Jordan Weinstein accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On June 4, 2001, the Clerk’s Office forwarded a user name and a password to Jordan Weinstein, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution’s Automated Docket Management System.

On June 4, 2001, the parties were notified that Jordan Weinstein had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 18, 2001.

3. Factual Background

Complainant has been in the business of selling computer products under the name A-Prompt Corporation within the United States since 1984. Since 1997, Complainant has been using the domain name <apromptcorp.com> on its web site.

In 1996, Respondent acquired the domain name <aprompt.com>. Respondent’s company collapsed in 2000, after nine years in the business of selling computer hardware, packaged and custom software, and consulting services primarily in the southeast U.S. Although A-Prompt Computers is no longer operational, Respondent continues to use the <aprompt.com> web site as a shell site, which provides some information, including a feature to notify those who send e-mails to the company of its current business state.

On December 2000, Respondent’s President, Wayne Brantley, contacted Complainant’s President, Risa Stolly, stating he no longer needed the domain name and inquired whether Complainant would be interested in purchasing it. Mr. Brantley indicated that although he tried to contact other companies with similar names, he only made direct contact with Complainant. Complainant declined to purchase the domain name, but asked if Mr. Brantley would forward to Complainant any e-mails intended for it, but addressed to Respondent’s <aprompt.com> e-mail address. Respondent asked to be paid for doing so. Negotiations between the parties concluded without a sale. At this point, Complainant decided to initiate this dispute resolution proceeding.

4. Parties’ Contentions

a. Complainant

Complainant asserts the following:

Complainant asserts that Respondent’s domain name is confusingly similar to its own. According to Complainant, confusion is so prevalent that customers have used the e-mail addresses of both companies interchangeably given that they are so similar. In addition, Complainant alleges Respondent has no legitimate interest in the domain name, particularly since Respondent’s web site serves no material function after the business’ collapse in 2000.

Complainant alleges Respondent is using its domain name in bad faith. According to Complainant, circumstances indicate that the sole purpose of the Respondent’s web site is to disrupt its business. Not only does Respondent’s web site fail to provide any business services to users, but also the auto reply message in the shell site uses the name of Complainant’s President in an attempt to create confusion among customers. The automated reply firmly indicates to those attempting to communicate with the company to look for business elsewhere. Complainant asserts that the message will cause customers who received the reply to turn away from Complainant’s company, resulting in thousands of dollars of lost business.

Complainant admits it refused to purchase the domain name from Respondent even after several offers. However, Complainant asserts that Respondent’s only purpose was to extort money by not only seeking an unreasonable amount for the domain name, but also by seeking a fee for forwarding e-mails. Complainant contends that Respondent’s failure to forward e-mails intended for A-Prompt Corp. at no cost is malicious behavior.

b. Respondent

Respondent asserts the following:

Respondent admits that its domain name <aprompt.com> is very similar to Complainant’s company name. However, Respondent states there are over 30 other companies using the name “A-Prompt”, which illustrates that Complainant does not have any more right to the name than any of the other companies. Respondent provided no evidence to support this assertion.

Respondent acknowledges receiving regular e-mails intended for Complainant, but can point to no such mishaps over misdirected e-mails of other businesses. Rather, Respondent alleges it is because of Complainant’s failure to give out the proper e-mail address that Respondent received e-mails intended for Complainant. Respondent asserts that, as in previous occasions where it would guide misdirected purchase orders and customers back to Complainant, its intention of forwarding misdirected e-mails demonstrates its good faith behavior.

Respondent asserts the confusion over its auto reply message, which alerted customers A-Prompt Computers had closed, is due to a bug and is not illegitimate behavior on its part. Respondent indicates Complainant’s President’s e-mail address <risa@www.aprompt.com> was the first one entered into the auto responder, and the service used her address for all automated replies. Had Respondent known of this technical problem, Respondent assures it would have promptly deactivated the service so as to prevent any confusion.

In the meantime, Respondent declares that it is still interested in maintaining the shell site and using the domain name while it considers offers to purchase the A-Prompt Computers name, business, customer base, and domain name.

5. Discussion and Findings

The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:

1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

UDRP Policy, Section 4(a).

As has been pointed out by previous Panels, it is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith.See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Dispute No. D99‑0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D00‑0001.

However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out‑of‑pocket costs directly related to the domain name; or

(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or

(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on‑line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.

UDRP Policy, Section 4(b).

These circumstances are non‑inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:

(i) Before any notice of the dispute, Registrant’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Registrant, as an individual, business, or other organization has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Registrant is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

UDRP Policy, Paragraph 4(c).

This Panel finds that Complainant has not proved all of the factors necessary to entitle it to relief. The Panel will address each of the factors in turn.

a. Similarity of the domain name to a mark in which Complainant has rights.

Complainant asserts that it has conducted business under the name A Prompt Corporation since 1984, and has used the trade name on its web site. However, Complainant has not asserted that it used its trade name as a trademark or service mark, and has not provided any evidence from which the Panel can infer such use. Complainant has therefore failed to satisfy its burden of showing that it has rights to a mark.

b. Respondent’s claim to a right or legitimate interest in respect of the domain name.

Respondent asserts that it has a “legitimate historic and current right to the domain.” Respondent claims that it operated under the trade name A-Prompt Computers Inc. from 1991, and that it used the domain name in connection with a bona fide offering of goods or services, namely the sale of computer software, from 1996 until 2000. Respondent states that it has “no immediate plans of placing any content there” and that it is currently considering offers to purchase A-Prompt Computers Inc. and the domain name. If it does not sell the domain name with the business, Respondent “will probably sell the domain at market value on EBay... .” On the other hand, Complainant asserts that based upon conversations with Respondent, Respondent is an ISP, and that Respondent offered to sell the domain name as “he no longer needed [it].” Neither party provided evidence in support of their assertions regarding Respondent’s legitimate interest.

Implicit in Complaint’s argument is the question whether a Respondent’s legitimate interest dissipates when the relevant business or use terminates. The Policy itself is written in the present tense, but Paragraph 4.c suggests that a prior legitimate use may be an adequate defense. If the interest were to dissipate upon termination of Respondent’s use of the domain name, then Complainant would prevail on this prong. This Panel, in agreement with the Panelist in CartaInc. v Oasis Telecommunications Inc., eResolution Case No. AF-0481, declinesto adopt the bright line rule which would be required in order to draw such a conclusion. In the case before this Panel, the Complaint was filed only four months after the alleged date that Respondent stopped use of the domain name; a period of time not unreasonable for winding up a business and too short to allow an inference of abandonment.

The Panel finds that, on balance, the Respondent has successfully shown it has a legitimate interest in respect of the domain name.

c. The domain name has not been registered in bad faith, but is being used in bad faith.

Complainant has the burden of proving that the domain name has been both registered and used in bad faith. This Panel is persuaded that the Respondent is using the domain name in bad faith, but finds that the Complainant has failed to prove that the domain name was registered in bad faith.

Respondent asserts that it registered and used the domain name for a bona fide business. Respondent asserts that at the time it registered the domain name, it was not aware of Complainant. At that time, Complainant had not registered a domain name incorporating its mark and had no federal trademark registration for the mark.

Complainant failed to provide any argument to support the assertion that Respondent registered the domain name in bad faith. Based upon the submissions of the parties, the Panel finds that Complainant failed to meet its burden of showing that Respondent registered the domain name in bad faith.

Complainant alleges that the automated replies generated by Respondent’s e-mail system evidence Respondent’s use of the domain name in bad faith. Until Respondent deactivated the auto-reply feature upon receipt of the Complaint, e-mail messages sent to addresses such as orders@aprompt.com received a reply from “risa@www.aprompt.com” with the following content:

APrompt is closed. We are no longer in business. Please take your business elsewhere. If we owe you money, write it off. If you are wanting some software, try www.egghead.com.

Sorry of the inconvenience.

Respondent claims that it had no knowledge that the replies were sent under the name of “Risa” (Complainant’s representative and President), and that the auto-reply’s use of “Risa” was due to the automated reply program automatically using the name of the sender of the first message.

Whether or not Respondent intended its auto-reply messages to bear the name of Complainant’s representative and President, this Panel is left with the clear impression that the body of the auto-reply message itself was directed at Complainant. Respondent asserts that “many still existing customers of my consulting know and use my personal email address.” It seems highly illogical to greet still-existing customers with a message asking them to “take their business elsewhere,” write off any debts owed, and go to a competitor for any new software. The harsh tone of the auto-reply message comports less with a businessman winding down a business of 9 years than with a domain name owner seeking to apply additional pressure to convince someone to buy a domain name, or pay to have e-mail forwarded. Respondent has no obligation either to forward Complainant’s mail or to sell Complainant its domain name, but if Respondent chooses to write a harshly-worded auto-reply message, and that message appears to come from Complainant’s representative, this Panel will infer that Respondent meant what it wrote.

This Panel concludes that Respondent is using the domain name in bad faith. However, the Panel also concludes that Complainant has not proved Respondent registered the domain name in bad faith. Therefore, Complainant cannot prevail on this element of the Policy.

6. Conclusions

This decision should not be read as condoning or validating Respondent’s bad faith use of the domain name, or as a decision on broader unfair competition concerns that fall outside of the limited scope of this proceeding. The Policy imposes formal requirements that Complainant has not met. Furthermore, due to the limited availability of evidentiary materials, unresolved factual issues remain. The Panel notes that the Policy specifically allows a party to submit the dispute to a court of competent jurisdiction, should it wish to do so. Policy, Paragraph 4(k).

This Panel decides that the Complainant has not proven each of the three elements in Section 4(a) of the UDRP Policy in the present proceeding. Therefore, pursuant to Paragraph 4(I) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel must deny the Complaint. The domain name shall remain registered to the Respondent.

7. Signature

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