DECISION

Objectiva Software Solutions, Inc. v. Canal Internet

Claim Number: FA0302000144594

PARTIES

Complainant is Objectiva Software Solutions, Inc., Carlsbad, CA USA (“Complainant”) represented by John A. Mizhir Jr. of Fish & Richardson P.C.  Respondent is Canal Internet, Paris, FRANCE (“Respondent”) represented by Boukhaili Hamdaoui, of Canal Internet.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <objectiva.com> and < objectiva.net>, registered with Tucows, Inc.

PANEL

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

Judge Marilyn W. Carney as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 3, 2003; the Forum received a hard copy of the Complaint on February 6, 2003.

On February 4, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <objectiva.com> and < objectiva.net> are registered with Tucows, Inc. and that the Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 February 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 27, 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@objectiva.com and postmaster@objectiva.net by e-mail.

A timely Response was received and determined to be complete on February 26, 2003.

Subsequently, on March 3, 2003, the Forum received an additional timely submission from Complainant.  Thereafter, Respondent forwarded a response to this additional submission from Complainant; it was, however, ruled that this last submission had not been received by the deadline and consequently was not considered.

On March 5, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Marilyn W. Carney as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Objectiva Software Solutions, Inc., a Delaware Corporation, states that it first used the Objectiva name in commerce on August 8, 2001, and that its business is to develop tailor-made software products to enable its clients to accelerate their time to market and improve the quality of their products and software.  On December 24, 2002, it also obtained a U.S. Trademark Registration for a similar use.  

Complaint further notes that it owns the domain name <objectivasoftware.com>, which resolves to the company’s website.  It argues that the disputed domain names, both <objectiva.com> and <objective.net> are confusingly similar to its corporate and trademark registrations, that Respondent has no rights to the disputed domain names, and that Respondent registered the disputed domain names in bad faith. 

It argues that Respondent has no rights to the domain names because Respondent is not currently using them, and its principal argument of “bad faith” is that Respondent  offered to sell Complainant the names for more than Respondent’s out of pocket expense.

B. Respondent

Respondent, Canal Internet, is a business located in Paris, France.  Respondent shows that it registered the disputed domain names on January 18, 2001 and February 1, 2001 with GANDI and that they were later transferred to TUCOWS as TUCOWS offered a redirection service, which GANDI did not.  It notes that it is an authorized TUCOWS reseller for the registration and management of top level domain names – including .com and .net.

In response to the allegation that the disputed domain names and that of the Complainant are confusingly similar, the Respondent does not disagree.  It notes, however, that OBJECTIVA is a common generic Portuguese/Spanish term which means OBJECTIVE   in English, and it may be used with any kind of business.   Respondent further notes that Canal Internet registered the domain names <objectiva.com> and  <objectiva.net> nearly two years before Complainant’s mark was registered (and several months before Complainant used the names in commerce).

Canal Internet alleges that it has been in the business of Internet & Computing Engineering since June 1999 and registered the disputed domain names along with other domain names for the purpose of developing new Internet and computing services targeted towards small and medium sized companies in France, but that the world economic slowdown interrupted and/or delayed some of its plans.

Respondent also specifically notes that only after Complainant made an offer to purchase the disputed domain names, were there any offers to sell.  Complainant offered to buy, and only then did Respondent make counter offers.                                    

C. Additional Submissions

Additional submissions were made by Complainant, but it did not offer anything new.

FINDINGS

1. The disputed domain names are <objectiva.com> and <objectiva.net>.

2. Respondent registered both of these names in January 2001.

3. Respondent is in the business of registering domain names for the purpose of developing new Internet and computing services targeted toward small and medium sized companies in France.

4. Objectiva is a common generic Portuguese/Spanish term which means objective in English.

5. Complainant first used the Objectiva name in July 2001, and in commerce in August 2001.

6. Complainant filed the name Objectiva with the U. S. Patent and Trademark office December 24, 2002.

7. On July 18, 2001 Complainant offered Respondent $500 for the disputed domain names; further negotiations followed.

8. Respondent effected a transfer of the disputed domain names from GANDI to TUCOWS; the transfer took place from December 4, 2002 to February 7, 2003 during which time Complainant registered its mark. 

9. Complainant maintains that the names are confusingly similar, that Respondent has no rights or legitimate interests in the names and that they were registered in bad faith.

10. Respondent does not disagree that the names may be confusingly similar, but denies the other allegations.

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

There doesn’t seem to be any real issue that the names are identical and/or confusingly similar. That having been said, there is much that is unsaid.  Objectiva in a language other than English seems to be a generic word meaning objective.  Also left unsaid by the Complainant is the fact that it was surely aware of the disputed names when it filed for its mark with the U. S. Patent and Trademark office: it had, after all, tried to buy the domains a year and a half before.

Rights or Legitimate Interests

Complainant bears the burden of proof on this issue.  Respondent claims that it registered its  <objectiva.com> and <objectiva.net> domain names with the intent to develop Internet and computing services targeting small and medium sized companies in France, but due to economic concerns, Respondent delayed development of this project. During the delay from January 2001 to December 4, 2002, however, Respondent used the domain names to redirect Internet traffic to its main website <canalinternet,fr>.  On December 4, 2002, Respondent agreed to transfer the domain names to a different registrar that did not have the same redirection services as Respondent’s previous registrar.  While Respondent implemented its own redirection service from December 4, 2002 to February 7, 2003, the disputed domain names were not in use.  During this time, December 24, 2002, Complainant registered the OBJECTIVA mark and subsequently initiated this administrative proceeding on February 6, 2003.  Pursuant to Policy ¶ 4(c)(1) it appears that Respondent had used the domains and intended to continue using them in the future.

Registration and Use in Bad Faith

Complainant asserts that Respondent’s bad faith registration and use of the disputed domain names are demonstrated by Respondent’s offer to sell the domain name registrations to Complainant for $10,000.  It insists that Respondent registered the names primarily for the purpose of selling the domain name registration to Complainant, the owner of the mark, which constitutes bad faith according to Policy ¶ 4(b)(1).  The facts show otherwise in that Respondent registered both <objectiva.com> and <objectiva.net> nearly two years before Complainant filed its registration for the mark and several months before Complainant first used the names in commerce or otherwise.

While Complainant contends that bad faith is also evidenced by Respondent’s offer to sell the disputed domain names, it was Complainant who initially offered to buy them. That Respondent made a counteroffer to sell at a figure of what might be in keeping with a “market price,” might just as well suggest good business practice as well as bad faith.

Reverse Domain Name Hijacking

While Respondent has not alleged Reverse Domain Name Hijacking, the facts would certainly sustain such an allegation.  Respondent recognizes that the names are similar to Complainant’s name, but nowhere does Complainant show or even suggest that Respondent was aware of Complainant’s name when the domain name registration was made.  How could it?  OBJECTIVA had not been in commercial use.  Complainant’s attempt to show that Respondent never used the names in a legitimate fashion lacks credibility; instead it shows that Complainant was not diligent in its search of names.  Finally, the bad faith issue.  Complainant tried to buy the disputed names, and then complained that Respondent wanted to sell them at a market price.  When Complainant elected not to buy them, it bided its time until this hiatus developed during the transfer time to submit its application for the service mark, and then to assert that as the owner of the service mark it was entitled to the disputed domain names.

DECISION

.

It is the decision of the Panel that the Complaint be DISMISSED, and Complainant’s demand to transfer of the names be denied.

Accordingly, it is Ordered that the <objectiva.com> and < objectiva.net> domain names remain with Respondent.

Marilyn W. Carney, Panelist
Dated: March 13, 2003

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