Zelix Pty Ltd v. Gabriel Torok
Claim Number: FA0708001065623
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.
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.
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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the Domain Name be transferred from Respondent to 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 email@example.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.
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.
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.
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).
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
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