Zelix Pty Ltd v. Gabriel
Torok
Claim Number: FA0708001065623
PARTIES
Complainant is Zelix Pty Ltd (“Complainant”), represented by Svet
Kovich, 5A Peach Court, Carlingford NSW 2118, Australia. Respondent is Gabriel Torok (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <klassmaster.com> (the “Domain Name”), registered with Godaddy.com,
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.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on August 22, 2007.
On August 20, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <klassmaster.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 31, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 20, 2007 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@klassmaster.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it owns registered trademark rights in the
mark KLASSMASTER, used in connection with Java software. It further claims common-law rights to such
mark dating back to 1997, based on having provided goods or services under that
mark since that date.
Complainant alleges that KLASSMASTER is a coined term with no meaning
in any language, and accordingly that there can be no reason for Respondent to
have adopted the same term but for an intent to disrupt Complainant’s business.
Complainant contends that Respondent, or at least a company of which he
is or has been president or CEO (“PreEmptive Solutions”) makes a product called
Dash-O that competes directly with Complainant’s KlassMaster product.
Complainant contends that Respondent also operates an Internet service
known as Mailinator, which is designed to allow consumers to adopt a
publicly-accessible e-mail address on short notice. Respondent uses several different domain
names for this service, including <mailinator.com>, as well as the
disputed Domain Name <klassmaster.com>. Internet users may thus offer their
correspondents a temporary email address at which to reach them, in the form name@klassmaster.com,
where the name can be a string of characters chosen by the user.
Complainant contends (and attaches a letter as evidence) that in December
2001, PreEmptive Solutions accused Complainant of patent infringement. Complainant argues that this letter evidences
Respondent’s knowledge of Complainant and its mark and associated services
since a date prior to the Domain Name registration.
Complainant contends that the Mailinator service is designed to be used
for unethical purposes and that associating its mark with such a service
tarnishes its image.
B. Respondent
Respondent denies that there is any confusing similarity between
KLASSMASTER as used by Complainant in connection with software and KLASSMASTER
as used by Respondent in connection with email services.
Respondent further claims to have made a bona-fide use of the domain name in commerce since prior to notice
of any dispute with Complainant. His
service meets a legitimate demand of consumers, namely for a quickly and easily
accessible e-mail address that can be used to receive messages while avoiding
the risk of spam associated with disclosure of one’s primary email address.
Respondent contends that the mark KLASSMASTER is suggestive of his
services in that “Klass” suggests the word “class” which suggests a class or
form of mail while “Master” suggests controlling such mail. Respondent further notes that the U.S. Patent
and Trademark Office has registered several marks containing the word KLASS and
at least one containing the phonetically identical term CLASSMASTER.
Respondent denies that he could use any other sequence of characters
for his anonymous e-mail service, since the service will only work for e-mail
sent to the <klassmaster.com>
address.
Respondent denies that he deliberately targeted Complainant and its
trademark, calling such a suggestion “false speculation.”
Finally, Respondent denies that there is anything unethical about the
use of anonymous e-mail proxies and notes that they can be helpful in avoiding
spam, a legitimate concern of Internet users.
FINDINGS
The Panel finds that Complainant owns
registered trademark rights in the mark KLASSMASTER and prior to the registration
of the Domain Name owned common-law rights in said mark; that the Domain Name
is confusingly similar (indeed identical) to the mark; that Respondent lacks
legitimate rights in the Domain Name, and that the Domain Name was registered
and used in bad faith.
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.
Complainant has submitted evidence of its
ownership of trademark registrations in
As to confusing similarity, the mark is
identical to the Domain Name, but for the latter’s addition of the generic
top-level domain “.com.” It has long
been established that this technical addition necessary to the functionality of
the domain name system does not eliminate confusing similarity.
Complainant need not hold a registration with
a trademark authority to establish rights in a mark under Policy ¶
4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also
Complainant holds a trademark registration
with the United States Patent and Trademark Office (“USPTO”) for the
KLASSMASTER mark (Reg. No. 3,151,148 issued
Complainant has further established that
Respondent’s <klassmaster.com> domain name is identical to Complainant’s KLASSMASTER mark, because it contains Complainant’s entire
KLASSMASTER mark and merely adds
the generic top-level domain (“gTLD”) “.com.”
The two are thus identical pursuant to policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th
Cir. 2002) (“Internet users searching for a company’s Web site often assume, as
a rule of thumb, that the domain name of a particular company will be the
company name or trademark followed by ‘.com.’”).
In sum, the Domain Name is confusingly
similar – indeed identical, to a mark in which Complainant owns rights.
Complainant argues that Respondent lacks
rights or legitimate interests in the Domain Name as he did not adopt the name
with a good-faith intent to use a name relevant to his business. Respondent argues that he adopted a name
relevant to his business in good faith.
On the record before the Panel, Complainant’s position is far more
plausible.
Complainant
contends that Respondent is using the <klassmaster.com> domain name, featuring Complainant’s trademark in
its entirety, to operate a website connecting Internet users to Respondent’s
“Mailinator” e-mail services. Such use is
not in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide
offering of goods or services).
Respondent argues that he could not have used
any other domain name because his service only works with the <klassmaster.com> domain
name. The response is disingenuous – the
service only works with that domain name because that is how Respondent chose
to set it up. (Actually, even that is
not entirely true, as the service works identically with the
<mailinator.com> domain name as well as several other alternate domain
names adopted by Respondent.) Inasmuch
as Respondent’s system involves anonymous e-mail addresses with usernames
chosen by users, it could have been set up to operate with any domain name that
Respondent might reasonably have adopted and that was then available. Absent any legitimate reason to adopt
Complainant’s mark as his own, Respondent’s suggestion that he needs the domain
name because that is the way his system works is at best circular reasoning.
Respondent further argues that KLASSMASTER is
“indirectly suggestive” of Respondent’s services because “class” refers to
“mail” and “master” refers to control, and because his services involving
controlling email. Any points Respondent
scores for creativity in making this argument are more than offset by its lack
of credibility. Complainant has long
used the mark KLASSMASTER. Respondent
was well aware of this fact – indeed, Respondent or his company, through
counsel, accused Complainant of patent infringement back in 2001, long before
he registered Complainant’s mark as a domain name. Accordingly, Respondent can hardly (and does
not) deny prior knowledge of Complainant’s mark. Moreover, Respondent already has a mark that
he associates with his e-mail service – he calls it “Mailinator” and his
service is available at the <mailinator.com> domain name just as at the
disputed Domain Name (and several others).
Respondent’s explanation for why he came up –
supposedly independently – with the same trademark as his adversary lacks any
evidentiary support and simply does not ring true. That “master” refers to “control” is perhaps
plausible, but that “class” refers to “mail” – let alone why the initial “c”
would be changed to a “k” just as Complainant has done – remains unexplained by
any argument or evidence. Intentional
similarity to Complainant’s mark seems the most likely explanation. Accordingly, the Panel finds that Respondent
knew of and adopted a mark similar to Complainant’s, and accordingly did not
establish or build up any bona-fide
rights in his Domain Name.
Complainant further contends that Respondent
is not commonly known by the <klassmaster.com> domain name or
licensed to register names featuring Complainant’s KLASSMASTER mark. Respondent is not commonly known by the <klassmaster.com>
domain name for purposes of Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the
respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is commonly known
by the disputed domain name); see also
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name).
The Panel need not reach or resolve the
question of whether Respondent’s “Mailinator” service provides a “legitimate”
or “ethical” service. There certainly
seem to be reasonable grounds for consumers to use, and Respondent to provide,
such a service. Lack of “legitimate
rights” in this case turns on the mark or domain name used, not the nature of
the service itself.
The Panel finds that Respondent has
registered and used the Domain Name in bad faith. Prior to Respondent’s registration of the
Domain Name, the parties were already adversaries. Respondent had accused Complainant of patent
infringement (yet apparently, as far as the record reveals, never followed
through on the threat to pursue such a claim).
Instead, Respondent registered a domain name identical to Complainant’s
mark, and offers little in the way of any plausible explanation for doing so.
Complainant contends that Respondent is using
the <klassmaster.com> domain name to operate a website featuring
goods and services that compete with Complainant’s own goods and services. Respondent denies that there is any
commercial overlap between the parties’ products or services. The Panel need not resolve the question of
direct competition, although it does appear from the record that at least one
of Respondent’s (or his affiliated company’s) products, known as Dash-O,
competes directly with Complainant’s KlassMaster product. What is clear is that Respondent is benefiting
commercially from the provision of goods or services and that Internet users may
be confused as to Complainant’s sponsorship of or affiliation with Respondent’s
<klassmaster.com> domain name.
If there is direct competition between the two, such deliberate creation
of a situation in which confusion is likely is evidence of Respondent’s bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where the respondent used the domain name, for commercial
gain, to intentionally attract users to a competitor of the complainant); see also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
Even assuming lack of direct competition,
however, the Panel finds that Respondent’s use of the <klassmaster.com>
domain name amounts to a disruption of Complainant’s business and is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad
faith where the respondent, a company financially linked to the complainant’s
main competitor, registered and used the domain name in question to disrupt the
complainant’s business).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <klassmaster.com> domain name be TRANSFERRED
from Respondent to Complainant.
Michael Albert, Panelist
Dated:
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