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Generic Top Level Domain Name (gTLD) Decisions |
Digital-Logic AG v. Malik Krechman
Claim
Number: FA0402000235827
Complainant is Digital-Logic AG (“Complainant”), represented
by Michele Caratsch, of Haymann & Baldi,
Zeltweg 44, Postfach 1622, Zurich, Switzerland-8032. Respondent is Malik
Krechman (“Respondent”), P.O. Box 360335, Brooklyn, NY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <digitallogic.com>, registered with Bulkregister.com.
The
undersigned 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 5, 2004; the
Forum received a hard copy of the
Complaint on February 10, 2004.
On
February 5, 2004, Bulkregister.com confirmed by e-mail to the Forum that the
domain name <digitallogic.com> is registered with Bulkregister.com
and that 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
February 19, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 10, 2004 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via
e-mail to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to
postmaster@digitallogic.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
March 25, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <digitallogic.com>
domain name is confusingly similar to Complainant’s DIGITAL-LOGIC mark.
2. Respondent does not have any rights or
legitimate interests in the <digitallogic.com> domain name.
3. Respondent registered and used the <digitallogic.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Digital-Logic AG, is the owner of the DIGITAL-LOGIC mark, which it registered
in the United States on the Supplemental
Register of the U.S. Patent and
Trademark Office (“USPTO”) on April 2, 2002 (U.S. Reg. No. 2,557,420 filed on
April 8, 1999). Under
the DIGITAL-LOGIC mark, Complainant develops, produces
and distributes computer hardware and software for use as an embedded operating
system. Complainant claims to have made continual use of the mark since 1992.
On December 29,
1996, Complainant registered the <digitallogic.ch> domain name for use
with its business. After over a year
of negotiations, Complainant was then able
to purchase the domain name registration for the <digitallogic.com>
domain name from MicroScientific.Inc., owner of the domain name registration
since January of 1999, for $10,000. The tranfer of this
sum was made to
EchoStar Network Solutions, Inc., one of the administrative and technical
contacts for the <digitallogic.com> domain name, on July 11, 2000.
The domain name was consequently transferred to BulkRegister as the new
registrar, and Dr. Emad Krechan
(the second administrative and technical
contact for the <digitallogic.com> domain name) made the domain
name available for Complainant’s use. Complainant then proceeded to use the
domain name for its business
for the next three and a half years.
On January 14,
2004, Complainant was informed by BulkRegister that the <digitallogic.com>
domain name registration had been renewed (without Complainant’s knowledge or
authorization) on January 13, 2004, and that the only
available contact listed
for the domain name registration was “forlease@digitallogic.com.” Complainant
was subsequently informed
by BulkRegister that Network Division, Inc., an
entity of which Complainant had never heard of or dealt with prior to this
incident,
had made the renewal on behalf of Complainant.
Complainant
attempted to contact Network Division, Inc., without success, and soon noticed
that the DNS entries for the <digitallogic.com> domain name had
been changed to <networkdivision.com> on January 22, 2004, again without
Complainant’s approval.
By January 24,
2004, Complainant’s website at the <digitallogic.com> domain name
had been deactivated and was no longer accessible by Internet users. All of
Complainant’s e-mail communications, which
had been running through the domain,
were also blocked.
Respondent,
Malik Krechman, is listed as sole registrant/contact for the <digitallogic.com>
domain name. Malik Krechman uses the same P.O. Box address (#360335) in
Brooklyn, NY, as Dr. Emad Krechan, the administrative and
technical contact for
the domain name registration when it was owned by MicroScientific.Inc.
The WHOIS
information for the <digitallogic.com> domain name states that
Respondent registered the domain name on January 20, 1999.
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.
Complainant, a
Swiss company, has alleged (without opposition) that it has what amount to
common law rights in the mark, DIGITAL-LOGIC,
having operated its business
under that name since 1992. In addition,
Complainant has provided evidence (as recited on the face of its below
mentioned U.S. registration certificate) of its
Swiss registration of the mark
on February 23, 1999 and a German registration on December 22, 2000. Complainant further established rights in
the DIGITAL-LOGIC mark through registration with the USPTO on April 2, 2002
under Registration
No. 2,557,420.
Complainant’s U.S. rights in the mark revert back to the date the
application was filed with the USPTO, i.e. April 8, 1999. 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.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller,
FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in
the FDNY mark relate back to the date that its successful
trademark
registration was filed with the U.S. Patent and Trademark Office); see also
J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435
(C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of
continual use of the mark, dating back to the filing
date of the application
for registration).
However and
unfortunately for Complainant, its rights in the mark do not predate the date
on which Respondent registered the <digitallogic.com> domain name,
January 20, 1999. Although, Complainant
asserts that the original registrant of the <digitallogic.com> domain
name sold the domain name registration to Complainant, and has provided the
Panel with evidence of payment, nothing
within the record establishes that Complainant has ever been the registered
holder of the domain name following that apparent
purchase. Due to
Complainant’s failure to establish rights in the mark prior to Respondent’s
registration of the domain name, which
it could have presumably done by
providing the record with an affidavit of use or other proof of use prior to
January of 1999, the
Panel reluctantly finds that Complainant has failed to
meet the requirements set forth in Policy Paragraph 4(a)(i). See Abt
Electronics, Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb.
20, 2004) (Complainant failed to establish Policy Paragraph 4(a)(i)
because Respondent's rights
in the <abt.com> domain name predated
Complainant's registration application for the ABT mark and
Complainant failed to provide
sufficient evidence of its common law rights in
the mark). Simply said, “The devil is in the details.”
Moreover, based
on the facts presented above, the Panel finds that this dispute raises
potential contractual issues and suggests fraudulent
activity on the part of
Respondent, which failed to complete the transfer of the domain name at issue
and subsequently renewed the
name.
Therefore, the Panel finds that the dispute is beyond the scope of the
Policy. See Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000)
(stating that the Policy’s administrative procedure is “intended only for the
relatively
narrow class of cases of ‘abusive registrations.’” Cases where
registered domain names are subject to legitimate disputes are relegated
to the
courts); see also Latent
Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000)
(dispute concerning employee’s registration of domain name in his own name and
subsequent
refusal to transfer it to employer raises issues of breach of
contract and breach of fiduciary duty that are more appropriately decided
in
court, not before a UDRP Panel); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001)
(refusing to transfer the domain name and stating that the ICANN Policy does
not apply because attempting
“to shoehorn what is essentially a business
dispute between former partners into a proceeding to adjudicate cybersquatting
is, at
its core, misguided, if not a misuse of the Policy”).
Because
Complainant must prove all three elements under Paragraph 4(a) of the Policy to
prevail in this proceeding, Complainant's
failure to prove the elements listed
in Policy Paragraph 4(a)(i) means that the Panel need not consider whether
Complainant has proven
the remaining elements contained in Policy Paragraphs
4(a)(ii) and (iii). See Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s
failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
For the reasons
set forth above, and based on the record as presented, this dispute does not
fall within the parameters of the Policy.
Accordingly, the relief requested is DENIED WITHOUT PREJUDICE TO
REFILING, and the Panel orders that the domain name REMAIN with
Respondent.
James A. Carmody, Esq., Panelist
Dated:
April 8, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/495.html