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John D. Polstra & Co., Inc. v. CvsUp Ltd. and John Wesley [2001] GENDND 1198 (20 June 2001)

WIPO Arbitration and Mediation Center

Complainant is the John D. Polstra & Co., Inc., and according to its Complaint, it is a corporation incorporated under the laws of the State of Washington, USA, with its principal place of business in Seattle, Washington, USA.

The Respondents have not responded to the Complaint, but according to paragraph II(B) of the Complaint which references the registrant database of Register.com, the registrar involved, as well as the materials submitted by the WIPO Arbitration and Mediation Center (hereafter "The Center"), the first Respondent in this proceeding is the entity CvsUp, Ltd. The second Respondent is John Wesley, with address listed at 31, 4^th Street, San Francisco, CA 94103, USA.

The dispute is with respect to the following related domain names (hereafter "the domain names"):

<cvsup.com>
<cvsup.net>
<cvsup.org>

The registrar with which these domain names are registered is Register.Com, 575 8^th Avenue, 11^th floor, New York, NY 10018, USA (hereafter "the registrar").

The procedures for resolving Complaints like this one are governed by the Uniform Policy for Domain Name Dispute Resolution (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN’s Rules for Uniform Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").

The current dispute lies within the scope of the Policy, so that this WIPO Administrative Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between the Registrar and the Respondents clearly incorporate the Policy, so that Respondents were notified of the existence of the Policy’s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that a (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that (ii) Respondent has no rights or legitimate interests in the domain name; and that (iii) Respondent’s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4(a). In order to successfully make its case, the Complainant must prove each of these three elements.

An electronic and hard copy of the complaint were filed on April 23-24, 2001. A request for Registrar Verification was made to the Registrar of the domain name on April 27, 2001 and such Verification was made on April 30, 2001. On May 1, 2001, the Center notified the Registrar of the filing of the Complaint with the Center. On May 1, 2001, notification of the Complaint was sent to Respondent by email to cvsup@usa.net, to postmaster@cvsup.com, postmaster@cvsup.net, and postmaster@cvsup.org, but this emails were not delivered successfully because these email addresses were apparently not active. Records provided by the Center indicate the Center also attempted to notify Respondent by post/courier, but that the courier envelope was returned undelivered to the Center.

Under the terms of the Center’s notification to Respondent of May 1, 2001, the last day for Respondents to send their Responses to the Complaint to the Center and to the Complainant was May 22, 2001. Although no Response has been received, under Paragraph 14 of the Rules, the Administrative Panel may choose to go ahead and review the facts in the case and make its decision based upon the facts before it at this time, as well as drawing any appropriate inferences from Respondent’s failure to respond.

The Panel consists of a single Panelist pursuant to Complainant’s request, and the Panelist was duly appointed by the Center. A Statement of Acceptance and Impartiality and Independence was submitted to the Center by the Panelist on May 29, 2001, and the Panelist was appointed by the Center on May 31, 2001. A decision on the Complaint is due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules.

There have been no further submissions by either side as of the date of this decision.

First, it is noted that because no Responses have been received from Respondents, the facts cited in the Complaint will be evaluated on their own merits.

Complainant states that for a long time prior to Respondent’s registration of the domain names that are the subject of the Complaint, Complainant has continuously used the name and trademark "cvsup" in connection with its computer file system products and services. Although Complainant has not yet received its U.S. trademark registration for the name "cvsup", the Complaint alleges that Complainant has made application to the U.S. Patent and Trademark Office for this registration on or about December 22, 2000, with first use of this mark by Complainant on or about August 3, 1996. See Complaint, paragraph 12(b)(i).

In addition, Complainant alleges that from its several years of widespread use, the "Cvsup" trademark has become one of a class of "famous marks" worldwide. See Complaint, Paragraph 12, at pp. 18-19.

Again, because no answer has been received from Respondents, the contentions cited herein will be those of the Complainant only.

Complainant avers that (1) the domain name is identical or confusingly similar to Complainant’s "Cvsup" product name referred to in Section 4 of this decision; (2) the Respondents have no rights or legitimate interests in the trade name; and (3) the domain name was registered and is being used in bad faith.

The Panel notes that these elements are often intertwined and not separate. For instance, bad faith by Respondent (element 3) may often be proven by its attempt to create confusion (element 1) between Respondent and Complainant’s activities.

In respect of these elements, Complainant alleges that Respondents:

(1) have deliberately created three websites with domain names confusingly similar to the Complainant’s product name for which Complainant is now seeking U.S. trademark registration;

(2) have demonstrated no intellectual property or other rights, or any positive commercial or other legitimate interest in this domain name; and

(3) as an act illustrating their bad faith, have deliberately concealed their identities and whereabouts.

As a result, Complainant asks this Panel to issue a decision to the effect that the domain name be transferred to Complainants, in accordance with Paragraph 4(i) of the Policy.

Based on the facts and contentions referenced above, the Panel finds as follows:

a. As Respondents have not disputed any allegations of fact by Complainant in Paragraph 4 of this Decision, the Panel accepts these allegations as true.

b. Complainant has adequately demonstrated its own intellectual property rights in the trademark "Cvsup" in the relevant trademark product/service international classes. Although the U.S. trademark registration has not yet been processed by the U.S. Patent and Trademark Office, there is no evidence that the registrations would be denied, especially in light of the more than four years of active usage of the mark in commerce by Complainant. And U.S. trademark law puts a premium on active commercial use of a mark, as opposed to registration alone, in order to acquire rights in that mark.

c. As regards proof of element (1) in Paragraph 5 above, the confusion element, the Panel visited Respondent’s three websites on June 1, 2001, and found identical "Coming Soon" banners on each of them from the Registrar, Register.com, which contain advertisements and promotions from Register.com. Respondent apparently registered all three domain names on June 26, 2000, (see Complaint, Paragraph 12(c)). They have been fallow for almost one year now, and so it is not clear when "Coming Soon" may materialize.

However, according to the WHOIS database materials submitted by the Registrar and the Center for the domain names in this case, the period to renew the registrations will expire on June 26, 2001. To date, there is no record of Respondent’s attempt to renew the registrations.

The Panel finds that the element of confusion does exist between the domain names at issue and Complainant’s trade name. Some probability of confusion with Complainant’s products, services and activities also exists, but may not be exceedingly high given the fact that there is no evidence that Respondent is targeting primarily computer users or others with particular interest in Complainant’s specific sphere of activity.

d. As regards proof of element (2) above, the lack of legitimate interest or rights in the trade name, Respondents have failed to assert any such interest or right. Therefore, the Panel finds that Respondents do not have any such interest or right.

e. As regards proof of element (3) above, the registration and use in bad faith by Respondents of the domain names, this is a very close call.

Several WIPO Panels have concluded that Complainant must prove both bad faith registration of the domain name by Respondent and bad faith use as well. This Panel concurs.

Paragraph 4(b) of the Policy cites, without limitation, various examples of both registration and usage of a domain name in bad faith. Complainant has frequently cited the WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows, from Australia. In that case, the Panel found that Respondent’s failure to respond or to be properly located, coupled with its registration of the highly famous Australian mark "Telstra", constituted bad faith registration by negative inference.

The Panel made it clear in that case that "bad faith" is not an abstract concept, but must be defined according to the circumstances of each case.

The Panel in this present case agrees.

(i) Bad faith registration by deliberate concealment of Respondent’s identity and whereabouts. This is not listed as a specific example of bad faith in the Policy or Rules. Nevertheless, when combined with other circumstances, this kind of concealment can give rise to a presumption of bad faith by Respondent, as was found in the Telstra case as well as another WIPO Administrative Panel Decision, Capital Broadcasting Company, Inc. v. Private (WIPO Case No. D2000-1609), involving a U.S. Complainant and a Russian Respondent.

Complainant has provided more than adequate details of its attempts to locate Respondents via various investigative means, all to no avail. Respondent CvsUp Ltd. appears not to be legally registered with the corporation authorities in the State of California, and Respondent John Wesley appears not to be locatable at the physical, phone or email addresses he provided to the Registrar. Indeed, this Panel has no evidence whether Mr. Wesley is alive or not. We do not know if Respondents are deliberately avoiding contact, or have simply given up their interest in the domain names and moved on.

The question before this Panel is what other factors will combine with Respondent’s non-responsiveness to the Registrar, Complainant, and the WIPO Center, so as to give rise to the presumption of bad faith registration by Respondent?

(ii) Bad faith use of the domain name by deliberately creating confusion with Complainant’s Name and/or activities. Referring back to the discussion above on the relationship between the bad faith element and the confusion element, the Panel finds that here, although Complainant’s product name "cvsup" may be well known to a specialized subset of computer engineers and technicians, this does not approach the degree of notoriety of the Australian mark "Telstra."

In the Telstra case, the likelihood of confusion between Complainant’s own website and Respondent’s domain name was very high and readily exploitable by Respondent, since Complainant had registered the domain names <telstra.com>, <telstra.net>, and <telstra.com.au> among others, while Respondent had registered <telstra.org>. In the present case, Complainant has apparently not registered any other domain names using the "cvsup" core name - although this may be due in part to the fact that Respondent had already registered the three most obvious ones - <cvsup.com>, <cvsup.net> and <cvsup.org>. Nevertheless, Telstra is the largest company listed on the Australian stock exchange and largest provider of telecommunication and information services in Australia, an undisputedly dominating position and trade name not mirrored in the present case by Complainant’s position.

(f) Complainant is asking this Panel to conclude that Respondents’ non-responsiveness to its inquiries and to this Complaint, coupled with Respondent’s lack of use of the domain names for almost a year, constitutes bad faith in registration and use of the domain name.

While sympathetic to Complainant’s position, this Panel cannot go that far. The Panel in the Telstra case concluded that inaction by Respondent with respect to the contested domain name could constitute bad faith use of the name, based on five factors. The first factor listed, however, is the very strong reputation of Complainant’s trademark both in Australia and elsewhere. This degree of fame gave rise to a presumption by the Panel in the Telstra case that Respondent in that case must have known about Complainant’s high reputation in the marketplace and registered the domain name to take improper advantage of it. The Panel in the present case does not find the same degree of fame in Complainant’s trade name, the knowledge of which is limited to a much smaller subset of people and the U.S. registration of which is still pending.

Therefore, this Panel finds that Complainant has not proven bad faith registration or use by Respondent on the set of facts presented here.

Based upon the Panel’s findings from Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panel concludes that there is not sufficient evidence of bad faith to cancel Respondents’ domain name registrations and transfer them to Complainant at this time. However, the Panel takes due note of the upcoming renewal dates for these domain names by Respondents, and recommends that Complainant do the same in case Respondents fail to renew the registrations on time.

Paul E. Mason
Sole Panelist

Dated: June 20, 2001