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Matthew Wright , Matt’s Script Archive, Inc. v. Klemen Stirn [2005] GENDND 245 (15 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Matthew Wright , Matt’s Script Archive, Inc. v. Klemen Stirn

Case No. D2005-0036

1. The Parties

The Complainants are Matthew Wright and Matt’s Script Archive, Inc., Colorado, United States of America; represented by Hagen & Melusky Law Offices, United States of America.

The Respondent is Klemen Stirn, Sevnica, Slovenia.

2. The Domain Name and Registrar

The disputed domain name <form-mail.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2005. On January 13, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On, January 13, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 17, 2005. The Respondent requested a 10-day extension of time to file his Response. Complainants consented to the extension, and the Center granted the extension of time to February 16, 2005. The Response was filed with the Center on February 15, 2005.

The Center appointed Christopher J. Pibus as the Sole Panelist in this matter on March 1, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The individual Complainant Matthew Wright is the sole owner of the corporate complainant Matt’s Script Archive, Inc. Since May 6, 2003, Complainants have operated an active website at “www.formmail.com. Complainants do not own any registered trademarks for FORMMAIL, but they rely upon a trade name registration in the State of Colorado, which was issued on March 10, 2003, for the name “FormMail.com”.

The Respondent Klemen Stirn is a student at the University of Ljubljana in Slovenia. He registered the disputed domain name <form-mail.com> (“the Domain Name”) on June 22, 2003, and began operating the active website on July 25, 2003.

5. Parties’ Contentions

A. Complainants

The Complainant Wright created a software program in June 1995, which he called Formmail. The software provides a generic web form-to-e-mail gateway. Essentially, the program permits website operators to receive via e-mail, the contents of forms which have been entered by website visitors. Complainant Wright claims to own the copyright in the Formmail Software, but has not provided any documentary evidence on this point.

Complainants claim common law trademark rights in “FORMMAIL” and “FormMail.com”, as well as the trade name rights described above. “FormMail” itself is alleged to be a famous trademark, based on the fact that the program has been downloaded from Complainants’ earlier website (“www.scriptarchive.com”) 3 million times by users around the world. Complainants originally offered the program as free-ware, but subsequently launched a commercial website under “formmail.com” on May 6, 2003.

Complainants acknowledge that they have not attempted to register the trademark FormMail in the USPTO, and admit that, in fact, an unrelated third party actually owns the only U.S. registration for FORMMAIL, for use in association with computer programs for intra-company communications (U.S. Reg. No. 1550022). Complainants submit that there has not been any marketplace confusion with the registered mark because there is no competitive point of intersection between the respective products and services.

Complainants allege that the common law mark FORMMAIL has acquired distinctiveness and secondary meaning, as those concepts are understood under U.S. law. Respondent’s use of the hyphenated version: <form-mail.com> is said to infringe on those common law rights. Complainants allege that Respondent deliberately set out to cause confusion among consumers, choosing <form-mail.com> because it was a “natural choice…of words someone would type in search engines” (Respondent’s e-mail of October 10, 2004).

Complainants also have made lengthy submissions about dilution theory and famous trademarks under U.S. law. In the Panel’s view, these submissions do not raise any relevant considerations or issues under the Policy. (See Bridgestone Firestone, Inc. et al v. Jack Myers, WIPO Case No. D2000-0190, and Lava Trademark Holding Company LLC v. Creative Labs, Inc., WIPO Case No. D2001-0994).

With respect to the issue of whether Respondent has rights or legitimate interests in the Domain Name, Complainants argue that Respondent developed his website after the Complainants had released their commercial website in May 2003, and deliberately chose the Domain Name for “the specific purpose of stealing customers”.

Respondent’s bad faith is alleged to be established because he must have had “certain knowledge” of the public profile of the Complainants’ trademark, trade name and domain name. Proof that the Respondent knew of the FormMail mark when he chose the Domain Name is said to be compelling evidence of bad faith.

B. Respondent

Respondent disputes the allegation that Complainants own any rights in the trademark FormMail, arguing that the alleged mark is just a combination of two descriptive words, which serve to identify a particular kind of processor, linking web forms to e-mail. Respondent admits that he knew about the FormMail program, but denies knowing about any trademark or trade name rights held by Complainants.

Respondent admits the Domain Name is confusingly similar to FormMail and <formmail.com> but denies that this is sufficient foundation for a complaint. Respondent actually provides evidence of two consumers who were confused by his choice of domain name. He received e-mails from these consumers prior to being notified of this proceeding, and he re-directed the consumers back to the Complainants’ website.

With respect to legitimate rights and interests in the Domain Name, Respondent submits that he chose the words carefully, in order to maximize exposure to search engine queries, where users were searching for form mail processors. His website was operational for more than 14 months prior to the Complaint. He claims to be offering products and services on a bona fide basis, without any intention to divert business unlawfully from the Complainants.

The most significant proof offered by the Respondent, relevant to this good faith, consists of search results for the terms “formmail” and “form mail”. The Respondent identifies himself as a person highly skilled in Search Engine Optimizing (SEO). This has allowed Respondent to attract significant search engine traffic to a number of websites he operates. With this level of skill, Respondent claims he could have easily engineered the “www.form-mail.com” website to capture search engine traffic intended for the Complainants’ website. Instead, he has carefully structured his website to capture traffic searching for the two descriptive terms “form” and “mail”, and has not designed his site to attract users searching for “formmail”. The use of a hyphen in the domain name, although it appears to be a minor variation, is significant in terms of search engine protocols because it means the search is structured to look for two words “form” and “mail” rather than the combined single word “formmail”.

The evidence described above has also been submitted by Respondent to refute the allegations of bad faith. Respondent notes that he placed a disclaimer on his website, after receiving Complainants’ objections, which links users to Complainants’ website and disclaims all affiliation to the Complainants.

Finally, Respondent advances a claim for reverse domain name hijacking, alleging that Complainants have “made up” claims of deliberate diversion of customers without any real evidence.

6. Discussion and Findings

There are three essential conditions which must be established in order for a Complaint to succeed, under paragraph 4(a) of the Policy:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to paragraph 4(a) of the Policy, the Complainants must prove that the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

There are 3 possible foundation points for the Complaint:

(i) trade name rights in “FormMail.com”;

(ii) common law trademark rights in FORMMAIL;

(iii) common law trademark rights in <formmail.com>.

With respect to trade names, the Policy does not recognize this category as supportive of rights within the meaning of paragraph 4(a), unless the Complainants can establish that they use the trade name as a trademark or service mark (see Ukranian World Congress v. Daniel Steel, WIPO Case No. D2004-0658). As such, the mere fact of registration of the trade name FormMail.com in Colorado does not advance Complainants’ position in any material way.

The essential question is whether the Complainants have established, through tangible evidence, that they hold common law rights in FormMail and <formmail.com>. Complainants rely on well-recognized principles relating to distinctiveness and secondary meaning to attempt to establish their position. It is acknowledged that protectable common law rights must be founded on exclusive use of a mark, sufficient to permit consumers to associate the mark with one particular business (citing 15 U.S.C.A. ξξ1052(f), 1141(1) and 1125(a)). However, Complainants’ own evidence casts doubt on the notion of exclusivity, since it is acknowledged that an unrelated third party owns the only U.S. trademark registration for FORMMAIL, used in association with software. The Respondent has also identified at least 2 other unrelated websites, which utilize variations of formmail: “www.formmail.to” and “www.formmail.to.com” for related services.

The extent to which the FormMail mark has been used does appear to be significant. The Complaint contains the allegation that the original FormMail program has been “downloaded 3 million times since 1995” (para 18). The Panel notes that the Complainants’ website indicates only that FormMail has been downloaded “Over two million times since 1997”. Either account is a substantial number, although the inconsistency is troubling.

The more serious deficiency is that this single piece of evidence stands alone, as if it should be sufficient on its own to establish common law rights, and indeed, famous status for the mark. In the Panel’s view, the evidence remains somewhat unconvincing, in spite of the large number of downloads. Complainants provide no evidence showing the range of users or comments or articles from third parties about the program, and a basic breakdown of the scale of free activities as opposed to commercial activities involving the mark. For most of its life, the FORMMAIL mark appears to have been associated with free-ware. After May 2003, that apparently changed, with the advent of the Complainants’ commercialized website. Yet no indication is given in the evidence of actual sales since 2003. The Panel is left in doubt as to whether any commercial activity involving the FormMail mark has actually occurred.

With respect to the nature of the trademark in issue, the Panel also takes into account the Respondent’s submissions about the descriptive nature of the constituent words in the mark. The Complainants have evidently reached into the common trade vocabulary in creating their mark, choosing words that have obvious descriptive functions in connection with website elements and communication over the Internet. In the light of the evidence as filed, the mark “FORMMAIL” can only be viewed as inherently weak, and this weakness has only been partially answered by the general evidence of use put forward by the Complainants.

In spite of the difficulties in the evidence, and after weighing all these factors, the Panel finds that the Complainants have managed, to establish rights in the trademark FORMMAIL. However, the Panel also concludes that FormMail is a relatively weak mark, with a correspondingly narrow ambit of protection.

With respect to the likelihood of confusion, in light of the Respondent’s candid admission on this point, the Panel finds that Complainants have established this element as well. Accordingly, Complainants’ have satisfied the first condition for the complaint, as set out in para (a) of the Policy.

B. Rights or Legitimate Interests

Under the Policy (para 4(c)), a Respondent may demonstrate legitimate interests or rights in the Domain Name by showing that: “before any notice of this dispute, respondent used…the domain name…in connection with a bona fide offering of goods or services.” In making this demonstration, the Respondent in this matter must address the timing of the launch of his website at <form-mail.com>, and must show that his use was in good faith, and not an infringement of Complainants’ trademark rights. In weighing the evidence on these points, the Panel must be mindful that Complainants bear the ultimate burden of proving that the Respondent had no rights or legitimate interests in the Domain Name. (See Cassare Enterprises Limited et al v. Victor Chandler International Limited, WIPO Case No. D2004-0753).

The Respondent has clearly shown that he actually started using the Domain Name as early as July – August 2003, some 14 months before he had notice of any dispute. Respondent appears to have operated his website actively and continuously since that time, offering a variety of services to a significant number of users.

The second issue is the key element in this analysis: whether Respondent’s use of the Domain Name can reasonably be viewed as bona fide and legitimate? A deliberate infringing use cannot be considered bona fide use (see Lava Trademark Holding, supra; citing Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847: “To conclude otherwise would mean that Respondent would rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”).

Bearing in mind the Complainants’ ultimate burden of proof, and the Panel’s limited ability to probe into the veracity of the allegations raised in this summary procedure, the Panel concludes that the Complainants have failed to establish this element of their case. The factors which support the finding of a legitimate interest on the part of the Respondent are as follows:

(1) The descriptive nature of the constituent words “form” and “mail” in the context of the associated services.

(2) The absence of any registered trademark for FORMMAIL, except that which is owned by an unrelated third party.

(3) Complainants’ failure to establish that the FormMail mark is distinctive of them.

(4) The Respondent’s deliberate choice of a hyphenated domain name, which is treated as 2 separate words for search engine protocols, and which is therefore significantly different from the single combined word adopted by Complainants, in the search context.

(5) The Respondent’s expertise in search engine optimization techniques, which he has employed judiciously to attract search engine traffic for the descriptive words “form” and “mail” but not for the combined word “formmail”.

(6) The co-existence of the websites operated by the Complainants and Respondent for a period of 14 months, prior to any objection by the Complainants, during which time there is no documented loss of business, or actual business interference, experienced by Complainants.

(7) The Respondent’s referral of two users back to the Complainants, after they had mistakenly contacted him in August 2003, and August 2004, long before this dispute was initiated.

(8) The Respondent’s use of a disclaimer on his website that makes it clear there is no affiliation to <formmail.com>, and the fact that Respondent provides a link to Complainants’ site.

The Panel finds that the Complainants have failed to establish that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Given the Panel’s finding with respect to legitimate interest, it is not necessary to provide a full analysis with respect to bad faith. The Panel notes with approval the principle that a descriptive domain name, derived from the combination of two ordinary English words, will trigger a heavier burden of proof to establish bad faith, as compared to disputes where the mark in issue is a coined or fanciful term (see Lawfinders Associates, Inc. v. Ultimate Search, WIPO Case No. D2004-0163, citing Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323).

The Panel also relies on the list of factors enumerated above in relation to legitimate interests, as supporting the conclusion that bad faith cannot be established on the evidentiary record, as presently constituted in this matter.

7. Reverse Domain Hijacking

Respondent alleges that Complainants have engaged in reverse domain name hijacking, by making up allegations of deliberate infringement and diversion of customers. The Panel is not prepared to find that the Complaint was initiated in bad faith, or with any improper intention to harass the Respondent. Rather, the Panel takes the view that the Complainants were fully within their rights to commence this proceeding. The failure to establish the constituent elements of the Complaint through persuasive evidence does not mean the Complainants acted improperly (see Lawfinders, supra.).

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be denied. The Panel also denies Respondent’s request for a finding of reverse domain name hijacking.

Christopher J. Pibus
Sole Panelist

Dated: March 15, 2005