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Generic Top Level Domain Name (gTLD) Decisions |
Louie Orbeta v. GENIUS Technologies Inc.
c/o Raj Baronia
Claim Number: FA0310000201467
PARTIES
Complainant
is Louie Orbeta (“Complainant”), represented by Louie
Orbeta, 438 Lipton St., Winnipeg, MB, Canada. Respondent is GENIUS
Technologies Inc c/o Raj Baronia, 604 Fallen Leaf Circle, San Ramon, CA, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <puremail.com>, registered with BulkRegister.Com.
PANEL
The
undersigned Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 7, 2003; the Forum received
a hard copy of the
Complaint on October 16, 2003.
On
October 7, 2003, BulkRegister.Com confirmed by e-mail to the Forum that the
domain name <puremail.com> is registered with BulkRegister.Com and
that the Respondent is the current registrant of the name. BulkRegister.Com has
verified
that Respondent is bound by the BulkRegister.Com 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
October 20, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 10, 2003 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@puremail.com by e-mail.
A
timely Response was received and determined to be complete on November 7, 2003.
On November 14, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Daniel B. Banks,
Jr. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
PUREMAIL is a registered U.S. Federal Trademark of
Complainant Louie Orbeta, in International Class 009. In the USA it is
registered
at the United States Patent and Trademark Office, Registration
Number 2,659,638. In Canada it is
registered at the Canadian Intellectual Property Office, Registration Number
TMA590466.
Goods and/or services include: Electronic mail
software that allows users to send, receive and filter electronic messages; the
software
includes electronic mail user authentication, managed protection from
unsolicited electronic mail and computer viruses that is updated
with minimal
customer intervention, and may be offered as email, web mail, imap, or software
add-on to existing electronic mail software.
Its first use in commerce was
November 20, 1998.
Complainant
is the sole holder of the PUREMAIL U.S. Federal Trademark. Complainant
has also obtained registration for the PUREMAIL
trademark in Canada.
Specifically, Complainant is the holder of the United States Patent Trademark
Office (“USPTO”) Registration
No. 2,659,638 (filed on December 1, 2001,
registered on the Principal Register on December 10, 2002) for the PUREMAIL
trademark.
Complainant also holds Registration No. TMA590466 (filed on
December 10, 2001, registered on September 22, 2003) for the PUREMAIL
trademark
with the Canadian Intellectual Property Office (“CIPO”).
PureMail
program is currently used in over 100 countries and has been featured in
several PC magazines and websites. The
PureMail program has been reviewed by several popular software sites such as
<zdnet.com>, <about.com> and <lockergnome.com>;
and has been
made available on several popular software download sites such as
<simtel.net>, <about.com>, <zdnet.fr>
and
<freewarepro.com>. A web search
using any popular web search service such as <google.com>, <yahoo.com>,
<altavista.com> and <alltheweb.com>;
and an examination of archived
newsgroups in <google.com> shows that Complainant’s PUREMAIL trademark is
clearly associated
with Complainant’s PureMail email filtering program.
The
PureMail email filtering software developed by Complainant uses the trademark
PUREMAIL as an integral identifying mark in association
with its business, and
Complainant has invested significant time, resources, and effort in
advertising, promoting, and establishing
goodwill in the mark in association
with its business. Complainant has not
licensed or otherwise permitted Respondent to use its PUREMAIL trademark for
any reason.
As
of October 4, 2003, the <puremail.com> website advertised the
following:
1. “An external solution for Detection,
Detention, and Deletion of Un-wanted Email (e.g. spam and virus) - much before
it reaches an
individual user's desktop.”
2. “Completely customizable at the
individual level - the user decides what kind
of
Email is "Wanted" or "Un-wanted"”
3. “An efficient "Outsourced"
Email Management system for the entire Enterprise - serving everybody@yourdomain.com”
4. “External Archiving and Backup of
incoming Email”
5. “External Audit Logs of incoming Email -
serving as "Proof-of-Delivery" by a third-party”
Complainant
is the sole owner of the PUREMAIL trademark and has not licensed or otherwise
permitted Respondent to use its trademark
for any purpose. A trademark search on the USPTO and CIPO
websites show that Respondent has not registered, applied for, nor claimed
rights in any
trademarks or business names that incorporate the word PUREMAIL
or any variation of PURE and MAIL. A
web search on any popular web search engine such as <google.com>,
<yahoo.com>, <altavista.com> and <alltheweb.com>
fail to
produce any results linking Respondent with <puremail.com>, but
rather identifying itself as GENIUS Technologies Inc. c/o Raj Baronia on
<genius.net>.
As
of October 4, 2003, Respondent was offering email filtering services on the <puremail.com>
website, with a logo branding it as “PUREmail™”. Users visiting the
website are presented with an email filtering service that was
neither
developed nor licensed by Complainant. Essentially, Respondent is
misappropriating the goodwill and recognition associated
with the PUREMAIL
trademark to lure users to its site where the user could subsequently purchase
a product from a competitor. Respondent
is therefore usurping internet
traffic rightly intended for the Complainant.
The
<puremail.com> website was inactive from the start date of
purchase on Nov 14, 1996 until October 4, 2003. An inspection of <puremail.com> archived websites on
<archive.org> (according to the <archive.org> website FAQ, it
offers “a service that allows people to visit archived versions of Web sites”
dating back to 1996) shows that from November 14, 1996 to October 4, 2003,
the contents of the <puremail.com> website are as follows:
·
From Nov
14, 1996 to May 30, 2002:
The <puremail.com> domain did not resolve to a website.
·
From May
30, 2002 to Feb 04, 2003:
“Under Construction! For any inquiries
related to this domain, strategic alliance, or investor relations please
contact us at: info@genius.net”
·
From Feb
04, 2003 to Oct 04, 2003:
“Puremail is coming soon.”
·
From October 04, 2003 to Oct 06, 2003: Respondent’s
use of the domain name <puremail.com> is in connection with an
offering of goods and/or services that is confusingly similar to Complainant’s
PUREMAIL trademark and goods
and services.
·
October 06, 2003: The <puremail.com>
website does not have any content. Complainant
faxed a cease-and-desist letter to Respondent on Oct 04, 2003. Respondent subsequently removed all content
from the <puremail.com> website on Oct 06, 2003.
From October 4-6, 2003,
Respondent advertised email filtering services on <puremail.com>
to unwary Internet users by causing them to believe that any goods and/or
services displayed at Respondent’s website are somehow
connected with or
endorsed by Complainant.
Complainant asserts that Respondent should have been aware
that Complainant had rights in the PUREMAIL trademark when it started offering
email filtering services, as evidenced by Complainant’s registration of the
PUREMAIL trademark with the USPTO and CIPO, its long
and continuous use of the
trademark in commerce since 1998 and the notoriety of Complainant’s trademark.
Complainant also asserts that it is evident from Annex A
that by using the <puremail.com> domain name to offer email
filtering services, Respondent has demonstrated bad faith by intentionally
attempting to attract, for
commercial gain, Internet users to Respondent’s web
site, by creating a likelihood of confusion with the Complainant’s PUREMAIL
trademark
as to the source, sponsorship, affiliation, or endorsement of
Respondent’s web site or location or of a product or service on Respondent’s
web site or location.
Complainant also asserts that it is evident from Annexes B,
C & P, where Respondent did not actively use the domain name by not
having
a content-filled website hosted on <puremail.com>, nor listing any
bona fide goods and/or services, is evidence of bad faith.
Complainant
also asserts that it is evident from Annex B that Respondent’s general offer to
sell the <puremail.com> domain name from May 30, 2002 to February
4, 2003, even if no certain price is demanded, is evidence of bad faith.
B.
Respondent
Genius
Technologies, Inc. (GENIUS) is a U.S. corporation formed in 1995. It provides a wide range of email management
services including email hosting, archival cataloging, filtering, security as
well as
audit and regulatory compliance for its clients.
GENIUS
registered the domain name <puremail.com> on November 14, 1996 and
since February 1997, has been using the domain name in provision of its email
management services for its
clients.
Over the years, the domain <puremail.com> has been well
integrated into various software applications and custom tools developed by
GENIUS for provision of its email management
services.
While
the domain name has been in active service since February 1997, GENIUS chose
not to have a public web-site associated with the
<puremail.com>
for various reasons, paramount among them being the security concern for GENIUS
clients whose email and valuable data was being hosted
on computer servers
identified with the domain <puremail.com>.
Notwithstanding
the lack of a public web-site, GENIUS clients have always had access to a
private version of <puremail.com> web-site (https://secure.<puremail.com>)
via secure login enabling them to utilize various email management
services. As such, the domain <puremail.com>
is commonly known among and is actively used by GENIUS clients.
GENIUS
has legitimate interests in the <puremail.com> domain name. It registered the domain name on November
14, 1996, more than six years before Complainant’s trademark registration date
of December
10, 2002. Since February
1997, and well before GENIUS became aware of any dispute, it has been actively
using the domain name for hosting and
managing its client’s email. Also GENIUS has integrated the domain name
into various software applications and custom tools developed as part if its
email management
services. Such use
constitutes a bonafide offering of goods and services in connection with the
domain name. Respondent has become commonly
known by the domain name among its clients.
Respondent’s
registration and use of the domain name is not in bad faith. It is legitimate and not intended to divert
consumers or to tarnish Complainant’s trademark. The fact that Respondent registered the domain name nearly six
years before Complainant’s registration of the PUREMAIL trademark and
over two
years before Complainant’s alleged first use date of November 20, 1998 shows
that the name was not registered in bad faith.
Further, GENIUS has consistently refused to sell the name despite
multiple offers, including several offers from Complainant.
Arguably,
it is Complainant’s efforts here which are conducted in bad faith. Complainant was well aware of the fact that
the domain name <puremail.com> was already registered and in use
by GENIUS at the time he chose a “confusingly similar” name for his software
product. Complainant went on to
register this “confusingly similar” name in the United States and in Canada
knowing all along that <puremail.com> had already been established
as a service mark of GENIUS by virtue of its use since February 1997.
FINDINGS
1 – Respondent concedes that the disputed
domain name is identical to Complainant’s PUREMAIL mark.
2 – The Respondent has rights and
legitimate interests in the disputed domain name.
3 – The domain name was not registered or
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.
Respondent concedes that the name is
identical to Complainant’s mark.
Respondent has been
actively using the disputed domain name to host and manage client email since
1997, prior to any of Complainant’s
rights in the PUREMAIL mark. This constitutes evidence that it has been
making a bona fide offering of goods or services at the disputed domain name
and is evidence
of its rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(i). See Latent Tech. Group, Inc. v.
Fritchie, FA 95285 (Nat.
Arb. Forum Sept. 1, 2000) (finding that Respondent does have a legitimate
interest in the domain name where Complainant
applied for registration of the
mark after Respondent registered the domain name and Complainant has not proven
any earlier use of
the mark); see also Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000)
(denying transfer of the domain name because Respondent’s use of the PARACHUTE
mark and
the domain name in question preceded any use of the service mark by
Complainant).
Respondent also has
demonstrated that because of widespread use of the disputed domain name,
clients have come to “commonly know”
Respondent by the disputed domain
name. This is further evidence that
Respondent has rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii).
See World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., &
Seattle Pen, Inc.,
D2000-0736 (WIPO Sept. 14, 2000) (finding that as Respondent registered the
trade name "WORLD PEN" in July 1996 and had
been conducting business
under that name since that date, it had rights or legitimate interests in the
disputed domain name); see also Always On UPS Systems Inc. v. Always-On,
Inc., FA 114467 (Nat. Arb. Forum Aug. 22, 2002) (finding that as Respondent
submitted evidence, via a press release and product information,
that it used
Complainant’s alleged common-law mark to identify the Respondent and its
business, it had rights or legitimate interests
in the disputed domain names).
Respondent registered the disputed domain name two
years before Complainant allegedly began using the PUREMAIL mark, therefore it
could not have
registered the disputed domain name in bad faith. See Aspen
Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that
it is impossible for Respondent to register disputed domain name in bad faith
if
Complainant's company did not exist at the time of registration); see
also Open Sys. Computing AS v. degli
Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where
Respondent registered the domain name in question before application
and
commencement of use of the trademark by Complainant).
Also,
the fact that Respondent has never attempted to sell its domain name
registration, and has in fact refused to sell it to Complainant
on several
occasions, is evidence that Respondent did not register or use the disputed
domain name in bad faith pursuant to Policy
¶ 4(b)(i). See PRIMEDIA Special Interest Publ’n Inc. v.
Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that Respondent did not
register the domain names in bad faith where there is no evidence
that
Respondent intended to sell the domain name or disrupt Complainant’s business);
see also 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 did not
indicate any purpose or intent on the part of 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).
Furthermore,
since Respondent has been using the disputed domain name since 1997, it could
not be considered to be “passively holding”
the disputed domain name as alleged
in the Complaint. See Vidiots Delight,
Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad
faith where Respondent was using the domain name in connection with its
business
even though no website was yet developed); see also Asphalt Research Tech., Inc. v. Anything.com,
D2000-0967 (WIPO Oct. 2, 2000) (finding that Complainant has failed to prove
that the domain name <ezstreet.com> was registered
and is being used in
bad faith or held passively for use by Respondent in bad faith).
It
is arguable that Complainant has engaged in Reverse Domain Name Hijacking,
however, since the decision does not hinge on this aspect,
it is not considered
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that Complainant’s request for
relief shall be DENIED.
Daniel B. Banks, Jr., Panelist
Dated: November 29, 2003
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