DECISION

 

Infogrames, Inc. v. MacSoft Software

Claim Number: FA0203000105971

 

PARTIES

The Complainant is Infogrames, Inc., Plymouth, MN (“Complainant”), of Infogrames, Inc. The Respondent is MacSoft Software, Bakersfield, CA (“Respondent”) represented by James Wiens, of Clifford & Brown P.A.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <macsoft.com>, registered with Network Solutions, Inc.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 20, 2002; the Forum received a hard copy of the Complaint on March 21, 2002.

 

On March 25, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <macsoft.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2002 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@macsoft.com by e-mail.

 

A timely Response was received and determined to be complete on April 15, 2002.

 

Complainant’s Additional Response was received on April 19, 2002 , and was considered timely.

 

Respondent’s Additional Response was received on April 29, 2002, and was not considered timely.

 

On April 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain name at issue is identical to Complainant’s registered trademark; that Respondent has no rights in or to the domain name at issue; and that Respondent’s use of the domain name at issue is in bad faith.

 

B. Respondent

The Respondent contends that it has rights in and to the domain name at issue and is not using the domain name in bad faith.

 

C. Additional Submissions

In the Complainant’s additional submission, which was received timely, reviewed and considered by this Panelist, Complaint contends that it has properly shown Respondent’s bad faith under ICANN Rule 4.b.; that Respondent’s cited uses of the domain name at issue are not bona fide uses; and that Respondent is not commonly known by the domain name at issue.

 

Respondent’s additional response was not received timely, and was not reviewed or considered by this Panelist.

 

FINDINGS

The Complainant is a publisher of entertainment software, and Complainant states that the MACSOFT brand functions as a distinctive source-identifier for its entire line of Macintosh products. 

 

The Complainant is the current owner of record of the trademark MACSOFT, said registration being issued on October 31, 1995.  The Complainant has used the mark continuously in commerce since 1994, through its various predecessors in interest.  On September 28, 1993 an Intent to Use Application was filed with the USPTO. 

 

The brand was originally used and registered by the Wizard Ware Group, Inc., which then became the Wizard Works Group, Inc.  In 1997, the Wizard Works Group, Inc. was purchased as a subsidiary by GT Interactive Software Corp., at which time the MACSOFT brand was acquired.  In 1999, GT Interactive Software Corp. was acquired by Infogrames Entertainment, S.A., and renamed Infogrames, Inc., following its acquisition and consolidation with other entities it had previously acquired.

 

The Respondent develops and sells integration, e-mail migration and coexistence software, and most recently developed software for traffic management and control for Windows based networks. 

 

Respondent has continuously conducted business under the name MacSoft, Inc. since 1986 and currently operates commercial real estate including an office building named "The MacSoft Building", a personal fitness gym, lease commercial fiber optics cable

and is engaged in commercial real estate investments and loans as well. 

 

The Respondent registered the domain name at issue in 1992. 

 

When Respondent learned of Complainant’s predecessor’s use of the name sometime in 1995, Respondent called WizardWare Group and explained that Respondent had been conducting business under that name for many years and was continuing to do business under that name, requesting that WizardWare change the name to eliminate any confusion.  Respondent’s request was refused.  As it was not the Respondent’s intention to develop or market Macintosh software, it began marketing software under the name Lightspeed.  The Respondent did not take any further action regarding the MACSOFT name, and does not want to relinquish the domain name at issue.

 

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

 

Respondent incorporated its business using the MACSOFT name in California in 1986, and is currently in good standing under California law.  Respondent asserts that it has been continuously doing business under the MACSOFT name since 1986 and has provided exhibits in support of its contention.

 

Respondent admits that the domain name at issue is identical to Complainant’s trademark, but notes that Respondent also has rights to the mark based on its continuous use in business since 1986.

 

Respondent began using the domain name at issue as its business name in 1986, and registered the domain name at issue in 1992.  Even though Complainant has registered the mark, Respondent’s use of the name predates Complainant’s registration of the mark.   See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that the trademark must predate the domain name”); see also Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 435 (7^th Cir. 1999) (finding that the filing of trademark application alone did not give priority over previous common law users).

 

Rights or Legitimate Interests

As Respondent registered the domain name at issue prior to the existence of Complainant’s company, it would appear that it was not Respondent’s intent to redirect Internet users to its website.  On the contrary, Respondent is using the domain name at issue to direct Internet users to another webpage operated by the Respondent selling its software which has been marketed under the MACSOFT name since 1986.  It would appear that Respondent is using the domain name at issue in connection with a bona fide offering of goods and services. See First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Respondent is using the domain name for a legitimate and fair purpose and there is evidence that it is known by the disputed domain name).

 

Also, Respondent has rights and legitimate interests in the domain name at issue as the domain name mirrors the name of a legitimate business conducted by the Respondent since 1986.  In addition, the Respondent registered the domain name in 1992, two years before Complainant received trademark registration for MACSOFT.  There is no question that the Respondent is commonly known by the disputed domain name.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name); see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that Respondent does have a legitimate interest in the domain name where Complainant applied for registration of the mark after Respondent registered the domain name and Complainant has not proven any earlier use of the mark).

 

 

Registration and Use in Bad Faith

Complainant did not register the mark until two years after Respondent registered the domain name at issue.  Therefore, it is unlikely that the Respondent registered the domain name with the intent of selling it to the Complainant.  In fact, when the Respondent learned Complainant’s predecessor was using the same name, Respondent contacted them requesting that they change their name in order not to cause any confusion.  In light of the evidence presented, it appears that Respondent’s primary intent when registering the domain name at issue was to use it in relation to Respondent’s software business, and to not sell it to Complainant. See DJF Assocs,. Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of dispute).

 

DECISION

 

 Complainant’s request for transfer of the domain name <macsoft.com> is DENIED.

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 14, 2002

 

 

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