DECISION

Intermap Technologies Corporation v. Salvage Electronic Inc.

Claim Number: FA0310000203130

PARTIES

Complainant, Intermap Technologies Corporation (“Complainant”) is represented by Kjelti Wilkes Kellough, of TingleMerrett  LLP, 1250, 639 - 5th Avenue SW, Calgary, AB, T2P 0M9, Canada. The respondent is Salvage Electronic Inc., represented by Kay Lyn Schwartz, of Gardere Wynne Sewell LLP, 1601 Elm Street, Suite 3000, Dallas, TX, USA, 75201.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <intermap.com>, registered with BulkRegister.Com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

David H. Bernstein as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 10, 2003; the Forum received a hard copy of the Complaint on October 15, 2003.

On October 16, 2003, BulkRegister.Com confirmed by e-mail to the Forum that the domain name <intermap.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@intermap.com by e-mail.

A Response was received electronically on November 10, 2003.  However, the hard copy of the Response was not received in a timely manner as proscribed by UDRP Rule 5(a) and (b).  Because the electronic version was submitted in a timely fashion, and because there was no prejudice to the Complainant, the Panel will accept and consider the Response.

Complainant’s Additional Submission was timely received on November 14, 2003.  The supplemental submission did not, however, address new facts or legal argument that arose after the date of the original Complaint.  Nor was it necessary to rebut assertions in the Response that Complainant could not have anticipated.  To the contrary, the supplemental submission merely reargued the same issues and attempted to fix the pleading deficiencies in the original Complaint.  This is an improper use of supplemental submissions, and therefore the Panel will disregard it (although the Panel notes that, even if it did consider the supplemental submission, it would not change the outcome of this case).  See generally Parfums Christian Dior S.A. v. Jadore, D2000-0938 (WIPO Nov. 3, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000).

On November 18, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.

JURISDICTIONAL HISTORY

BulkRegister.com has confirmed that the registrant of the domain name is Salvage Electronic, Inc. (“Salvage”), the respondent named in the Complaint.  BulkRegister.com lists Michael Borschow of Superior Broadcasting Corporation (“Superior”) as both Administrative Contact and Technical Contact for the domain name.  Superior claims that it is the assignee of the domain name and has controlled the domain name since 1995.  Superior states that it made an administrative error in failing to update the WHOIS data, which is why Salvage still is listed as the owner.

The Forum, as an accredited provider under the ICANN Rules, has jurisdiction only over parties who have agreed to be subject to these proceedings.  Although registrants of domain names in the “.com” generic top-level domain agree, through their registration agreements, to submit to the jurisdiction of these ICANN proceedings (thus subjecting Salvage to the jurisdiction of this Panel), the Panel cannot reach parties who have not so agreed.  Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000).

Here, Superior claims that Salvage assigned the domain name to it in 1995.  Although Complainant disputes the assignment (which, Complainant properly notes, is undated), the facts that Superior is listed as administrative contact and that Superior filed an intent-to-use trademark application for the mark INTERMAP in August 1995 tends to support its assertion..  Accordingly, in the absence of any evidence submitted by Complainant challenging Superior’s ownership of the domain name, the Panel will treat Superior as the Respondent.  See Tough Traveler v. Kelty Pack, Inc., WIPO Case No. D2000-0783 (Sept. 28, 2000).

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant Intermap Technologies Corporation argues that it has satisfied the three elements required under the Policy. 

In regard to the first requirement under the Policy – ownership of a trademark that is identical or confusingly similar to the domain name at issue – Complainant states that it owns the unregistered trademark INTERMAP, which it uses “in respect of digital descriptions of the surface of the earth, digital elevation models and orthorectified radar image map products, which provide a precise digital model of the shape of the earth’s surface.”  Complainant alleges that it uses the trademark INTERMAP to sell the identified products “into a number of geospacial markets for varying commercial, consumer and government applications.”  Complainant further states that Respondent’s domain name, <intermap.com>, is identical to Complainant’s trademark.

As to the second required element of the Policy, Complainant asserts that Respondent has no legitimate interest or rights in the domain name.  Complainant first argues that the domain name “demonstrates no connection to the goods and services provided on the Respondent’s website,” because it resolves to a website selling satellite dishes and corresponding services.  Second, Complainant notes that Respondent is not commonly known by the domain name, but rather by the names “Dish Network” and “getdish.com.”

Finally, in regard to the third required element under the Policy, Complainant asserts that the domain name has been registered and used in bad faith because Respondent renewed the domain name on June 14, 2003 despite having knowledge of Complainant’s asserted trademark rights in the domain name “and the Complainant’s desire to utilize same as its URL.”

B. Respondent

Superior is in the business of providing various television and broadcasting services, including advertising and promoting direct broadcast satellite equipment, installation and programming services offered by others.  It argues that Complainant fails to satisfy the three elements required under the Policy. 

First, Superior argues that Complainant has failed to show that it own rights to a trademark which is identical or confusingly similar to the domain name.  Specifically, while conceding that the domain name is identical to Complainant’s alleged trademark, Superior argues that Complainant has failed to establish rights to that trademark because it has provided neither proof of registration nor evidence establishing common law trademark rights.  Superior further argues that, even if Complainant had demonstrated possession of common law trademark rights, those rights did not develop until after Complainant incorporated in June 1996, a year after Respondent acquired the domain name.

In respect to the second element of the Policy, Superior contends that it has legitimate interests in the domain name.  It argues that it established its interests in the domain name in August 1995, when it submitted an intent-to-use trademark application (“ITU” application) to the United States Patent and Trademark Office for the trademark INTERMAP in connection with “computer services, namely providing on-line directory services for use in connection with a global computer information network.”  Although Superior later abandoned the ITU application, it contends that it continues to have “plans to use the Domain Name in connection with providing an internet graphical search engine . . . , even though those plans are still in the development stages.”  Respondent points out that the site presently located at the domain name states that the site is a “FUTURE HOME TO AN INTERNET GRAPHICAL SEARCH ENGINE.” 

Finally, in respect to the third element required under the Policy, Superior argues that it neither registered nor is using the domain name in bad faith.  It states that it did not acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant, but rather for legitimate use in connection with a global internet search engine.  Superior further states that it did not solicit offers to purchase the domain name, arguing that it considered selling the domain name to Complainant only after Complainant contacted it for that purpose and then only as a matter of “good business practices.”  Finally, Superior argues that its renewal of the domain name in 2003, and every other year since its 1995 acquisition of the name, was “motivated purely by business considerations” and does not constitute bad faith merely because, prior to renewal, Superior knew of Complainant’s interest in the domain name.

FINDINGS

Upon careful review of the evidence, the Panel concludes that the domain was not registered in bad faith.  Accordingly, the Complaint must fail.

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.

Failure to prove any one of these elements is fatal to a Complaint.  Because Complainant in this case cannot prove bad faith registration, the Panel need not consider the other factors.

Complainant argues that Respondent’s bad faith registration is evidenced by the fact that Respondent, “with full knowledge of the Complainant’s trademark rights in the name and the Complainant’s desire to utilize same as its URL,” nonetheless renewed registration of the domain name on June 14, 2003.  Bad faith registration, however, is not to be measured at the time of renewal; rather, it is measured at the time of initial registration.  Football League v. Armand F. Lange & Assocs., FA 12871 (Nat. Arb. Forum Dec. 26, 2002) (“once a Panel finds that a domain name was originally registered in good faith, any subsequent renewals which could qualify as having been done in bad faith is irrelevant”); see also Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int’l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001) (“if a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”).  That is consistent with the Policy, which considers as bad faith actions such as the registration of a domain name with the intent to sell it to the trademark owner; it also is consistent with the fact that renewal of a domain name registration is largely an automatic and ministerial act, rather than one to which parties give some thought and consideration (as they do the initial selection and registration of a domain name).

In this case, the Complainant makes no allegations that the initial registration was in bad faith.  Nor could it.  Respondent persuasively argues that Salvage initially registered the name, and Superior acquired it by assignment, in 1995, all prior to Complainant’s formation in 1996.  Respondent’s registration cannot have been in bad faith if, at the time, it had not heard of Complainant, DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (no bad faith registration if respondent had not heard of complainant’s mark at time of registration), and if, in fact, Complainant did not even exist at the time.  Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (it is impossible for Respondent to register a domain name in bad faith if Complainant’s company did not exist at the time of registration); E-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001); Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000).

DECISION

Having determined that Respondent did not register the domain name in bad faith, a required element under the Policy, the Panel concludes that relief requested must be DENIED.

David H. Bernstein, Panelist
Dated: December 14, 2003

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