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Artemis Management Systems Inc. v. Web TV Networks, Inc. formerly known as Artemis Research [2001] GENDND 983 (18 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Artemis Management Systems Inc. v. Web TV Networks, Inc. formerly known as Artemis Research

1.1 The Complainant is Artemis Management Systems Inc., a corporation organized and existing under the laws of the State of California, having its principal place of business at 6260 Lookout Road, Boulder, Colorado, United States of America.

1.2 The Respondent is Web TV Networks, Inc., formerly known as Artemis Research, a corporation with an address at 1065 La Avenida St., Mountain View, California, United States of America.

The domain name at issue is <artemis.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), a registrar based in Herndon, Virginia, United States of America.

3.1 A Complaint was submitted electronically to the WIPO Center on January 6, 2001, and the signed original, together with four copies forwarded by express courier, were received on January 31, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated February 1, 2001.

3.2 On February 5, 2001, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

3.3 On February 6, 2001, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a one-member Panel were paid on time and in the required amount by the Complainant.

3.5 No formal deficiencies having been recorded, on February 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI, and ICANN), setting a deadline of February 26, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by email to the email addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.

3.6 A Response was received electronically on February 27, 2001, and in hardcopy on February 28, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on February 28, 2001. Respondent requested a three-person panel and enclosed the fees therefor in the required amount.

3.7 On April 3, 2001, the WIPO Center Sent a Notification of Panel Appointment, appointing Dennis A Foster, Esq. and Professor Jessica Litman, who had previously submitted Statements of Acceptance and Declarations of Impartiality and Independence. On the same date, the WIPO Center forwarded a Presiding Panelist Selection List to the parties, requesting that such list be returned no later than April 9, 2001, with the candidates ranked in order of preference.

3.8 On April 24, 2001, having received a Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center notified the parties that M. Scott Donahey had been appointed as Presiding Panelist and that Panelist Selection was now complete. The Notification stated that the Panel Decision was due on May 8, 2001. The date for Panel Decision was later extended to May 18, 2001.

4.1 Complainant first registered the ARTEMIS mark with the United States Patent and Trademark Office ("USPTO") in 1981 in connection with computer programs recorded on magnetic storage media for assisting customers in project management. The mark has subsequently been registered in twenty-eight other countries by Complainant, who has used the mark in conjunction with its project management software and consulting service, and has used the name ARTEMIS beginning in 1976. Artemis is the name of the Greek goddess of the hunt and of the moon, the Roman equivalent of which is the goddess Diana.

4.2 Complainant has over 550,000 licensees for its software product worldwide. Complainant advertises in numerous publications and tradeshows throughout the world, which are specifically directed at project managers operating with an annual budget in excess of $750,000.

4.3 Respondent registered the domain name at issue on April 29, 1995.

4.4 At the time that Respondent registered the domain name at issue, Respondent operated under the name Artemis Research. In March 1995, Respondent first developed the WebTV technology that allows users to display the Internet on a standard television monitor. Respondent established a fanciful web site to which the domain name at issue resolved, which web site was intended to amuse and to mask the nature of Respondent's research effort.

4.5 On May 25, 1995, Respondent filed an application with the USPTO for registration of the mark ARTEMIS in connection with computer software for use in the field of entertainment, telecommunications, and communications, namely for generating virtual reality environments and related products. That application is still pending. Response, Annex 3.

4.6 Respondent began to devote virtually all of its time to the WebTV Project, and in June 1995 organized a corporation under the laws of the State of California by the name of WebTV Networks, Inc. Despite the formation of this new entity, Respondent continued to do business under the "Artemis Research" name for some time thereafter.

4.7 Respondent currently uses the domain name at issue not only to resolve to the fanciful web site, which Respondent claims has historical significance to Respondent, but also to support its internal email system.

4.8 On June 1, 1999, one of the principals of Respondent severed his connection with Respondent. Under the terms of the separation agreement, that principal is to receive all rights to the Artemis name and mark once Respondent begins using the WebTV name exclusively. The principal's counsel has taken over the prosecution of the ARTEMIS trademark application, and the principal has incorporated a new business, Artemis Ventures, Inc., for the purpose of carrying on his business activities.

4.9 Complainant alleges that in 1997 and again in 2000, Complainant offered to purchase the domain name at issue from Respondent and that Respondent rejected each offer. Respondent does not specifically recall any particular offers from Complainant, but in the more than six years that Respondent has owned the domain name at issue, Respondent has received numerous offers from third parties who wished to acquire the domain name at issue, and Respondent has rejected all of them.

5.1 Complainant contends that Respondent has registered a domain name which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, in that Respondent no longer conducts business under the name and in that Respondent's web site is out of date, and that Respondent has registered and is using the domain name at issue in bad faith, because Respondent's web site is out of date and the domain name at issue is not being used in a bona fide manner.

5.2 Respondent apparently admits that the domain name at issue is identical to marks in which Complainant has rights (see, e.g., Response, ¶ 20), but Respondent contends that it has rights and legitimate interests in respect of the domain name at issue, since it registered the domain name in order to promote the business of Artemis Research, that it has an application for registration of the ARTEMIS mark pending, which has been pending since 1995, and that Respondent is making a bona fide use of the domain name at issue to preserve a part of its corporate history in the form of the initial web site and as the foundation for its internal email system. Finally, Respondent denies that it registered the domain name in bad faith, since at the time of the registration Respondent was unaware of Complainant's existence, that it registered the domain name in conjunction with its business name, and that it promptly applied for a trademark on the name in question.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. There is no dispute that Complainant has rights in the ARTEMIS mark. Respondent apparently does not contest and the Panel finds that the domain name at issue is identical to the mark in which Complainant has rights.

Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain name at issue. Paragraph 4(c) of the Policy sets out ways in which a Respondent may demonstrate rights or legitimate interests in respect of the domain name at issue. Subparagraph (i) of that Paragraph provides that such rights can be demonstrated where "before any notice to [Respondent] of the dispute, [Respondent has] use[d], or demonstrabl[y] prepar[ed] to use, the domain name in connection with a bona fide offering of goods or services." The Panel finds that Respondent has established rights and legitimate interests in respect of the domain name at issue under this subparagraph for several reasons.

First, nowhere does Complainant allege that it notified Respondent of a dispute at any time prior to the filing of the Complaint in this matter. Complainant's only allegations of pre-dispute contacts with Respondent are as follows:

"There have been two attempts to contact the Respondent regarding the acquisition of the subject domain name annotated herein. The first contact was in 1997 whereby Artemis contacted Artemis Research regarding the possibility of purchasing the subject domain name. At that time Artemis was told that the name was not for sale and that several other entities were interested in purchasing the rights to the domain name. The second contact was late in 2000 where again Artemis inquired regarding the acquisition of the subject domain name. Their response was that the domain name was not for sale."

Complainant does not allege that it notified Respondent of its trademark rights or asserted that Respondent's use of the domain name was prohibited by law or by the Policy. Accordingly, Respondent received no notice of the dispute until it received a copy of the Complaint in the instant matter.

Second, the use of the domain name in conjunction with the business of Artemis Research, the application and prosecution of the registration of the trademark ARTEMIS, and the contemplated use and preparations to use the domain name in conjunction with the business of Artemis Ventures, Inc. are bona fide uses and preparations to use which predate the notice of the dispute. The domain name at issue uses a name of a well-known Greek goddess. Even had Respondent received actual notice prior to the registration of the name, Respondent would still have been within its rights to register the domain name at issue. CRS Technology Corp. v. CondeNet Inc., ICANN Case No. FA93547 (concierge.com).

Third, the fact that the domain name at issue corresponds to Artemis Research and Artemis Ventures, Inc., names under which Respondent operated or under which Respondent's principal is preparing to operate, also qualify as rights and legitimate interests under paragraph 4(c)(ii) of the Policy. Gateway, Inc. v. Pixelera.com, Inc., ICANN Case No. D2000-0109; Loblaws, Inc. v. Presidentchoice.inc/presidentchoice.com, ICANN Case No. AF-170a, b, & c.

Finally, Respondent's use of the common term "artemis" as a domain name in conjunction with its email is evidence of rights and legitimate interests under paragraph 4(c)(i) of the Policy. Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, ICANN Case No. D2000-0161 (where <zero.com> was used for email services).

Since the Panel finds that Respondent has rights or legitimate interests in respect of the domain name at issue, the Panel does not need to reach the issue of bad faith registration and use.

The Panel does not find that Complainant is guilty of bad faith reverse domain name hijacking. The Complaint in this proceeding was not frivolous and, in the Panel's view, was not filed in an attempt to gain possession of a domain name to which the Complainant had no colorable claim.

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, but that the Respondent has rights to or legitimate interests in respect of the domain name at issue. Accordingly, the relief requested in the Complaint is denied.

M. Scott Donahey
Presiding Panelist

Dennis A. Foster
Panelist

Jessica Litman
Panelist

Dated: May 18, 2001