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Generic Top Level Domain Name (gTLD) Decisions |
ProjectExchange Inc. v. Web Time
Claim Number: FA0204000109703
PARTIES
Complainant
is ProjectExchange Inc., St.
Johnsbury, VT, USA (“Complainant”) represented by Jean D. Desrochers.
Respondent is Web Time,
Charleston, SC, USA (“Respondent”) represented by Zak Muscovitch.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <webtime.com>,
registered with Network Solutions.
PANEL
The
undersigned 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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 12, 2002; the Forum received
a hard copy of the
Complaint on April 15, 2002.
On
April 19, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <webtime.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 Uniform Domain Name Dispute
Resolution Policy (the
“Policy”).
On
April 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 13,
2002 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@webtime.com by e-mail.
A
timely Response was received on May 13, 2002, but the exhibits were received on
May 14, 2002 after the Response deadline.
The
Panel considered the exhibits received on May 14, 2002, under the authority of
Rule 10(b) of the Rules for Uniform Domain Name
Dispute Resolution Policy.
On May 24, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
is ProjectExchange, Inc. of St. Johnsbury, Vermont.
Complainant
is successor in interest of IMS Information Management Services, Inc.
Complainant
is registrant of a trademark for the word “Webtime.” “Webtime” was registered with the United States Patent and
Trademark Office July 21, 1998.
Complainant’s
trademark and the domain name registered by Respondent are identical.
Respondent
operates a pornographic web site, which is a gateway to other pornographic
sites. This does not constitute a bona
fide offering of goods or services.
Respondent
has not been commonly known as “Webtime.”
Internet
users expect to find information regarding Complainant’s product on
Respondent’s web site. This causes harm
to Complainant’s business practices and tarnishes Complainant’s trademark.
Complainant
cannot verify the identification of Respondent and is unsure if Respondent is a
competitor.
Complainant
believes that Respondent registered the disputed domain name in bad faith
because Respondent is a competitor of Complainant
and registered the domain
name for the purpose of disrupting Complainant’s business.
Complainant
sent letters dated September 27, 2000, and March 22, 2002, notifying Respondent
of Complainant’s trademark rights and
requesting Respondent to discontinue the
use of WEBTIME web site as well as to remove WEBTIME from meta
tags immediately. No response was
received. This is evidence of bad
faith.
B.
Respondent
Respondent
is an individual residing in Charleston, South Carolina.
Respondent
is in the business of operating a web site at <WEBTIME.COM> that
consists primarily of links to various adult-oriented businesses with which
Respondent has an affiliate relationship.
Respondent earns commissions on traffic directed to such sites through a
so-called “affiliate program.”
The
sites to which traffic is directed through Respondent’s web site are
pornographic related web sites, but such sites are entirely
legal in nature.
Complainant
has produced no evidence that it owns the trademark registration for WEBTIME.
WEBTIME
is a generic name capable of many applications and uses. The first person to register a generic
domain name in good faith is entitled to the domain name.
Trademarks
may be used by several different persons in connection with different products
or services.
The
word WEBTIME is in widespread use.
There
can be no bad faith found by failure of Respondent to reply to the letter of
Complainant since Respondent has no legal responsibility
to respond.
Respondent
cannot be found to have registered and used the domain name <WEBTIME.COM>
in bad faith since the domain name was registered in 1995 and the
trademark, WEBTIME, was not registered until 1998. Respondent could not have heard of
Complainant in 1995.
Respondent
notified Complainant on April 29, 2002, that Respondent was not a competitor of
Complainant. Complainant refused to
terminate this domain name dispute proceeding and is guilty of Reverse Domain
Name Hijacking.
Complainant
was aware that Respondent was not a competitor of Complainant.
Respondent
concedes that the disputed domain name and the trademark are identical.
Complainant
presents no evidence that Respondent has no rights and interests in the domain
name, nor is any evidence presented that
Respondent acted in bad faith.
C.
Additional Submissions
None
FINDINGS
1. Complainant is a corporation. The business of the corporation is not
revealed in the pleadings.
2. An organization listed as Information
Management Services, Inc. owns a trademark registered with the United States
Patent and Trademark
Office for the trademark, WEBTIME. The registration was effective on July
21, 1998. The registration shows first
use in commerce as September 1996.
3. Complainant contends that it is the
successor in interest of the organization, IMS Information Management Services,
Inc. This contention is not contested,
and it is taken as true.
4. No evidence is presented that either
ProjectExchange Inc., the Complainant, or IMS Information Management Services,
Inc. are related
in any manner with Information Management Services, Inc., the
holder of the trademark.
5. The trademark, WEBTIME, and the
domain name, <WEBTIME.COM> are identical.
6. Complainant presents no evidence that it
and Respondent are competitors, since the business of Complainant is not stated
in the pleadings.
7. Complainant has not shown that Respondent
has no rights or legitimate interests in the domain name, <WEBTIME.COM>.
8. No evidence is presented to prove that
Respondent registered and used the domain name in bad faith.
9. Respondent first registered the domain
name on July 28, 1995, prior to the first use in commerce by the organization,
Information
Management Services, Inc. of the term WEBTIME. No evidence is presented that Complainant,
or any other person or organization possessed common law rights or other
interest deserving
trademark protection during the year 1995 or at any time
prior to the year 1996.
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
The first element Complainant must prove
is that it has rights in the trademark in question before the issue of whether
the trademark
and domain name are identical or confusingly similar must be
decided. In this case Complainant
attaches as an exhibit a trademark registration for the trademark, WEBTIME, in
the name of Information Management Services, Inc. Complainant contends that its name is ProjectExchange Inc., which
is the successor in interest to an organization called IMS Information
Management Services, Inc. No
relationship is alleged between either of these and Information Management
Services, Inc. Respondent challenges
this failure to allege and show the relationship of these organizations and
moves that the Complaint be dismissed
on the ground that Complainant has failed
to prove any right in the trademark, WEBTIME. Respondent may be correct in this assertion but the Panel
will not base its decision on this issue. This case does not require a decision
on this point to dispose of this domain name dispute proceeding. Respondent concedes that the trademark owned
by Information Management Services, Inc. and the domain name, <WEBTIME.COM>,
are identical. Respondent is
correct.
The addition of the generic top-level
domain (gTLD) “.com” after a name has no effect in creating any difference
between a trademark
and a domain name. See Pomellato S.P.A. v. Tonetti, D2000-0493
(WIPO July 7, 2000); See Also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000); See Also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279
F.3d. 1135 (9th Cir. 2002).
Complainant prevails on this point.
Rights or Legitimate Interests
Complainant bears the burden of showing
that Respondent has no rights or legitimate interests in respect of the domain
name. Complainant makes two
contentions. The first is that, “To the
best of our knowledge, Respondent of the dispute has not been commonly known by
the domain name.” Complainant presents
no evidence as to the truth of this statement. Respondent fails to contest this
allegation or contend that Respondent
has been commonly known as WEBTIME,
so this is taken as uncontested and proved.
Complainant’s next contention is that
Respondent offers no bona fide goods or services because Respondent’s web site
is pornographic
site and a gateway to other pornographic sites. Respondent concedes that its web site exists
primarily of links to various adult-oriented businesses of a pornographic
nature. Respondent is paid a commission
for such services. But Respondent contends
that such links are entirely legal in nature. Neither party offers any evidence
or citation of authority to
support their assertions.
The Panel notes that domain name
decisions are not consistent on this issue.
One Panel stated, “The use of a domain name to direct internet users to
other web sites which may offer goods or services does not
constitute use of
the domain name for a bona fide offering of goods or services” when related to
a pornographic site. Women in Military Serv. for Am. Mem’l Found., Inc. v.
Russian Web Mktg, D2001-0610 (WIPO July 11, 2001). Another Panel was not satisfied that the
Complainant had shown that the Respondent has no rights or legitimate interests
in the Domain
Name where “Respondent has shown that TSTV is recognized as an
abbreviation for ‘Transsexual and Transvestite’ and that it is so
used in the relevant
section of the pornographic industry.
Accordingly, the Respondent appears to have used the domain name in
connection with the bona fide offering of such services to customers…Respondent
has provided corroborated reasons for his adoption of the domain name and of
his continued use of it in the bona fide conduct of
his business.” Toronto
Star Newspapers Ltd v. Virtual Dates Inc. D2000-1612 (WIPO Feb. 6,
2001). See also MatchNet plc v. MAC
Trading, D2000-0205 (WIPO May 11, 2000); See Also Coral Tradeworks, Ltd
v. Eastern Net, Inc., D2000-1295 (WIPO 26, 2000); See Also Lycos Asia
Ltd. v. Buy This Name, D2001-0828 (WIPO Aug. 17, 2001).
Respondent contends that before any
notice of the dispute Respondent used the domain name in connection with a bona
fide offering
of goods or services. It
is certainly true that Respondent registered the domain name at least one year
prior to Complainant’s first use of the word WEBTIME in commerce. Complainant could have had no legitimate
rights or interest in the name WEBTIME at the time of the domain name
registration. As between the parties to
this domain name dispute, only Respondent could have had legitimate rights and
interests in the domain name
at the time of registration.
But it is not necessary to decide this
domain name dispute on the basis of rights and legitimate interests, or to
reconcile the authorities
in this respect.
The failure of Complainant to prevail on the bad faith issue resolves
the case in favor of Respondent.
Registration and Use in Bad Faith
The
burden is upon Complainant to prove that Respondent’s domain name “has been
registered and is being used in bad faith.”
It is clear from a review of the domain
name registration documents and the trademark registration documents attached
to the pleadings
in this case that the domain name was registered by Respondent
in 1995 and that the trademark registration was granted to Information
Management Services, Inc. in 1998 showing first use in commerce in 1996.
“There are ample authorities supporting the
view that a trademark that did not exist at the time the disputed domain name
was registered
cannot serve as the basis for a claim under the ICAAN Policy,
since it is impossible for the domain name to have been registered
in bad
faith.” Ode v. Intership Limited, D2001-0074 (WIPO May 1, 2001), and
cases cited therein.
Each of the circumstances listed in
Paragraph 4(b) which, if found by the Panel to be present, shall be evidence of
the registration
and use of a domain name in bad faith presuppose the existence
of a trademark, whether registered or common law, at the time of registration
of the disputed domain name.
Complainant had no trademark in existence at the time the disputed
domain name was registered by Respondent.
The domain name, <WEBTIME.COM> is not shown to have been
registered in bad faith.
After
considering the submissions the Panel finds that the Complaint was not brought
in bad faith in an attempt at Reverse Domain
Name Hijacking nor was it brought
primarily to harass the domain name holder.
Respondent’s request for a finding of Reverse Domain Name Hijacking is
refused.
DECISION
THE COMPLAINT OF
PROJECTEXCHANGE INC., AGAINST WEB TIME IS DISMISSED AND THE REQUESTED TRANSFER
OF THE DOMAIN NAME, <WEBTIME.COM>,
IS DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 7, 2001
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