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Generic Top Level Domain Name (gTLD) Decisions |
Mytech Partners Inc. v. Jebs
Corporation c/o Lisa Briggs
Claim Number: FA0212000135645
PARTIES
Complainant
is Mytech Partners, Inc., Minneapolis, MN, USA (“Complainant”)
represented by Lyf Wildenberg, of Mytech Partners, Inc. Respondent is Jebs Corporation c/o Lisa Briggs, Vancouver, BC,
CANADA (“Respondent”) represented by Ari Goldberger, of ESQWire.com
Law Firm.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <mytech.com>, registered with Register.com,
Inc.
PANEL
Each
of the undersigned panelists 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
E. Sorkin, Karl V. Fink, and James A. Crary, Chair, served as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 6, 2002; the Forum received
a hard copy of the
Complaint on December 13, 2002.
On
December 9, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the
domain name <mytech.com> is registered with Register.com, Inc. and
that the Respondent is the current registrant of the name. Register.com, Inc.
has verified
that Respondent is bound by the Register.com, Inc. 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
December 17, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 6, 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@mytech.com by e-mail. On January 3, 2003,
an Extension of Time to Respond to Complaint was granted to Respondent,
setting
a deadline of January 16, 2003 by which Respondent could file a Response to the
Complaint.
A
timely Response was received and determined to be complete on January 16, 2003.
On
January 28, 2003, pursuant to Respondent’s request to have the dispute decided
by a three-member Panel, the Forum appointed David E.
Sorkin, Karl V. Fink, and James A. Crary, Chair as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
The
Complainant asserted that it had rights in MYTECH “Complainant has a
Trade/Market that is inclusive to the word MYTECH in the
computer and computer
network consulting services”. It was asserted that Complainant demonstrated a
bona fide offering of goods and
services “regarding trademark”. It was asserted
further that the Complainant was a commonly referred to and known as “Mytech”.
The
Complainant maintained that Respondent was not currently using and had never
used the domain name mytech.com. and that Respondent “has parked the
domain for seventeen months”. Respondent had not demonstrated any preparations
to use the domain
and had made no bona fide offering of goods or services
regarding the domain. Complainant asserted Respondent was not known by the
domain name and did not have any non-commercial use of the domain. Finally, the
Complainant asserted bad faith in that the Respondent
had acquired the domain
name specifically for the purpose of selling the domain to the Complainant.
Transfer of the domain name was
sought by the Complainant.
B.
Respondent
The
disputed domain name <mytech.com> was registered November 4, 1997
together with approximately 300 other domain names with the prefix name “my” in
connection with
a business formally known as MyInternet.com. Most of the
business was sold in early 2000 but the Respondent intended to re-launch
other
parts of the business plan pending an improvement in the environment for
fundraising such ventures.
Respondent’s
domain name registration took place 3 years before Complainant claimed
first-use of its trademark, it was almost 5 years
prior to Complainant’s
trademark registration of May 7, 2002. Since it was impossible for Respondent
to have registered the disputed
domain name in bad faith because there was no
trademark or even use of the mark at the time Respondent registered the domain
name,
Complainant had abused these precedings and engaged in reverse domain
name hijacking.
The
Panel was asked to dismiss the complaint and to find reverse domain name
hijacking since the Complainant had been instituted without
a possible factual
basis to establish bad faith or lack of a legitimate interest on the part of
the Respondent.
Respondent
had invested over $3.5 million dollars in the MyInternet venture. At one time,
the business employed 25 people. MyInternet
enabled users to perform various
on-line management tasks from any computer connected to the Internet through a
user-friendly interface.
Other services were offered as well.
The
Respondent registered more than 300 domain names related to various categories.
Each of the names was preceded by the word “my”.
In early 2000 part of the
business was sold to NamesDirect.com.
The
term MYTECH is a descriptive term composed of the singular possessive pronoun
“my” and the common abbreviation for technology,
“tech,” meaning my technology.
A Google.com search of the descriptive term MYTECH revealed substantial
third-party use.
The
Respondent maintained that Complainant’s mark provided no enforceable rights
under the Policy with respect to the disputed domain
since the domain preceded
the trademarks first use and registration by substantial periods of time and
the complaint could be denied
on that basis alone.
It
was also asserted that MYTECH and MYTECH PARTNERS are not identical, that a
non-distinctive mark could not be “dismantled in the
way necessary to find
identically or confusing similarity”.
It
was noted that Respondent had legitimate interest in the disputed domain name.
It had retained the domain despite the sale of its
company. The mere intent to
use the domain for a business plan even if that plan never gets off the ground
is sufficient to establish
Respondent’s legitimate interest. A finding of
legitimate interest is supported in that Respondent invested over $3.5 million
dollars
and thousands of hours of time to the MyInternet.com business, which
had commenced operations and had 25 employees.
It
further was noted that Complainant’s unsolicited offer to purchase the disputed
domain name for $5,000 constituted recognition
of Respondent’s legitimate
interests.
Regarding
bad faith registration and use, Respondent asserted that Complainant cannot
meet the burden of proving bad faith registration
of the domain name because it
was an antecedent to the trademark application. Since authorities supported 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 ICANN Policy.
Neither could the Complainant establish bad faith based on Respondent’s reply
to Complainant’s unsolicited inquiry concerning purchase
of the disputed domain
name.
Finally,
Respondent asserted reverse domain name hijacking. The Complainant initiated
these precedings because it was unable to purchase
the disputed domain name at
the $5,000 price offered. The Complainant knew when it filed the complaint the
Respondent had registered
the disputed domain name before Complainant had ever
filed for a trademark for MYTECH PARTNERS. This constituted abuse of the
administrative
process. Further, the Complainant had no plausible basis for the
complaint considering the flimsy nature of the registration and
since the term was generic in nature. It should
have been apparent to the Complainant that it could not prove all of the
elements required
by the URDP Policy.
FINDINGS
1.
The domain name mytech.com
was registered November 4, 1997.
2.
Complainant’s trademark
MYTECH PARTNERS was registered May 5, 2002. The mark was first used in commerce
October 8, 2000.
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.
It
was the Panel’s conclusion that the Complainant must fail under the facts of
this case. Respondent’s domain name registration predates
Complainant’s use of
the MYTECH PARTNERS mark by three years and it’s registration with the United
States Patent and Trademark Office
by five years. The Panel finds that the
Complainant had no grounds to bring this claim under the URDP. That is because
it is impossible
for the Complainant to establish that Respondent registered
the disputed domain name in bad faith when there was no trademark or
even use
of the trade name at the time Respondent registered it. See John Ode D/BA
ODE and ODE-Optimum Digital Enterprises v Internship Ltd D2001-0074 (WIPO
May 1, 2001). In that case the Panel stated:
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 ICANN Policy, since it is impossible for the domain name
to have been registered
in bad faith.
In
this case the domain name was registered three years before the trademark even
existed, and therefore it could not have been registered
in bad faith under the
UDRP.
The
Panel dispensed with a discussion of identical and/or confusingly similar, and
rights or legitimate interests elements since under
the Policy, the complaint
fails unless all three elements necessary to establish an abusive domain name
registration are established.
Reverse
Domain Name Hijacking
The
Panel was asked to make a finding of reverse domain name hijacking under Rule
15(d). The Rules specifically put the burden on
the Panel to determine whether
the Complainant has tried to use the Policy in bad faith to attempt to deprive
a registered domain
name holder of a domain name. See Rodale, Inc. v.
Cambridge, Case No. DBIZ2002-00153 (WIPO June 28, 2002).
In
this case one Panelist, David Sorkin, would have found reverse domain name
hijacking given what he consider to be Complainant’s
bad faith effort to use
the Policy since Complainant could not establish any plausible factual basis
for relief under the Policy.
The John Ode Case noted above on which Mr.
Sorkin served as a panelist contains a
list of cases where the Panels had made reverse domain name hijacking findings
in cases where the domain
name registration predated the existence of the
trademark. See also Aspen Grove, Inc. v. Aspen Grove, No. D2001-0798 (WIPO
Oct. 5, 2001).
The
majority of the Panel felt however that in this case the finding was not
justified. It is noted that the Complainant pursued these
proceedings without
the benefit of legal counsel. The complaint was a bare-bones affair that did
not reflect a deep understanding
of the Policy and Rules. While the Respondent
asked for the relief, there was no evidence extraneous of the complaint itself
to support
a finding that Complainant acted intentionally to abuse these
proceedings. The majority of the Panel was of the opinion that a finding
under
15(d) of the Policy should be reserved for those cases where there is a clear
showing of abuse. See Business Architecture Group, Inc. v. Reflex
Publishing, FA 97051 (Nat. Arb. Forum June 5, 2001). The Panel wrote:
…
where the complaint appears to have been drafted pro se and without a clear
understanding trademark principles on its face, we find
insufficient evidence to
conclude that the Complainant brought this action in bad faith.
A majority of the Panel concluded that the
complaint was not brought in bad faith.
DECISION
The
request to transfer the domain name to Complainant is denied.
David E. Sorkin, Karl V. Fink, and James A. Crary, Chair,
Panelists
Dated: February 7, 2003
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