DECISION

M2 Software, Inc. v. Robert Walker

Claim Number:  FA0308000183704

PARTIES

Complainant is M2 Software, Inc., Santa Monica, CA (“Complainant”).  Respondent is Robert Walker, Phoenix, AZ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <m2software.com>, registered with Wild West Domains, Inc.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 8, 2003; the Forum received a hard copy of the Complaint on the same day.

On August 14, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <m2software.com> is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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@m2software.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 15, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <m2software.com> domain name is confusingly similar to Complainant’s M2 mark and identical to its registered corporate name, M2 SOFTWARE, INC.

2. Respondent does not have any rights or legitimate interests in the <m2software.com> domain name.

3. Respondent registered and used the <m2software.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is incorporated in the State of Delaware as M2 SOFTWARE, INC. and holds a registered trademark in M2, which was registered on the Principal Register of the U.S. Patent and Trademark Office in October 1995, as Reg. No. 1,931,182.  Since at least January 1992, Complainant has continuously used the M2 mark in commerce in connection with the development of software, music, and multimedia, and related industry services.

Complainant held registration of the <m2software.com> domain name (now at issue) until May 13, 2003, at which time, Complainant asserts, the registration expired and the registrar deleted its registration without notice.

Respondent registered the <m2software.com> domain name on June 20, 2003, which Complainant asserts was the first day Respondent could register the name after the grace period following the lapse of the registration passed.  There is no evidence that Respondent has made any active use of the name.  Complainant asserts, without documentation, that Respondent posted an ad at the <m2software.com> domain name, offering domain name registration services.

Complainant has provided evidence that Respondent operates an entity known as “DOMAINWERKZ.COM,” which is ostensibly used to sell domain name registration services as well as pre-registered domain names.  Complainant has submitted screenshots from two domain names, both of which are allegedly being offered for sale by Respondent.  Complainant has not suggested that either infringes on its rights or the rights of another party.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established rights in the M2 mark through registration with the U.S. Patent and Trademark Office.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

While the Policy protects trademarks and service marks, the fact that the disputed domain name and Complainant’s registered company name are nearly identical lends to a finding of confusing similarity.  Furthermore, the word “software” directly describes Complainant’s business and is associated with Complainant’s registered M2 mark, compounding the potential for confusion.  As a top-level domain is required of all domain names, the Panel finds the <m2software.com> domain name to be confusingly similar to Complainant’s M2 mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name.  Given Respondent’s failure to contest the assertion, the Panel may accept it as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

While there is no direct evidence in the record that Respondent has attempted to sell its registration of the disputed domain name, it does appear that Respondent’s registration of the <m2software.com> was the result of improper opportunism.  On the same day Complainant’s domain name became available to be registered, it was so registered by Respondent.  Such behavior suggests that Respondent was aware of Complainant’s rights in the name and associated mark and intended to opportunistically trade upon the goodwill of the mark or possibly extort some form of compensation from Complainant in exchange for the return of its domain name.  Such behavior does not establish Respondent’s rights or legitimate interests in the domain name.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name”); see also Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that Respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by Complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).

Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Complainant asserts that Respondent’s business as a reseller of domain names demonstrates that Respondent registered and used the <m2software.com> domain name in bad faith.  Because Respondent has not attempted to sell the disputed domain name to Complainant and because the other domain names allegedly for sale by Respondent appear to be generic, the Panel will not rely on this allegation as evidence of Respondent’s bad faith.

The fact that Respondent registered the domain name on the very day it became available, however, is highly instructive to the bad faith analysis.  Respondent appears to be well-versed in domain registration; indeed, Respondent was able to register Complainant’s <m2software.com> domain name before Complainant was even aware that its registration had lapsed.  Respondent knew that the domain name had been previously registered by another and was on notice that the previous registrant could still have rights in the name.  Rather than swooping in to cash in on Complainant’s failure to renew the name, given Respondent’s constructive notice of Complainant’s rights, Respondent should have at least made a cursory investigation as to others’ rights in the name.  To wit, Policy ¶ 2(b) requires registrants to represent that, to their knowledge, “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.”  But there is no evidence Respondent made any effort to ascertain whether others might have rights in this recycled domain name.  Indeed, the primary source of the domain name’s value lies in the fact that it once belonged to Complainant.

Because Respondent has declined to explain to this Panel what legitimate use it might have for Complainant’s former domain name, the Panel finds that Respondent’s registration and use (or non-use, to be more accurate) of the disputed domain name were in bad faith.  See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name); see also R-H-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that Respondent’s registration and use of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith even though Respondent had not used the domain name because “It makes no sense whatever to wait until [Respondent] actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <m2software.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  September 22, 2003

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