Lucid Technologies, Inc. v. Dynamo.com LLC c/o Spam Protected
Claim Number: FA0710001095287
Complainant is Lucid Technologies, Inc. (“Complainant”), represented by Gwenn
Roos, of Law Offices of Gwenn Roos,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lucid.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David E. Sorkin, Dawn Osborne, and Jeffrey H. Kaufman as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2007.
On October 19, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <lucid.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on November 19, 2007.
On December 4, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin, Dawn Osborne, and Jeffrey H. Kaufman as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant was founded in 1991, and is the owner of various trademarks
and service marks incorporating the element LUCID in the
Complainant alleges that the disputed domain name <lucid.com> is identical and confusingly similar to its LUCID marks; that Respondent lacks rights or legitimate interests in the domain name; and that Respondent registered and is using the domain name in bad faith. In support of its bad faith claim, Complainant asserts that Respondent knew or should have known of Complainant’s marks at all relevant times; that Respondent has intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s marks; that Respondent registered the domain name to disrupt the business of a competitor; that Respondent has registered multiple domain names containing Complainant’s mark; and that Respondent refused to disable the domain names even after receipt of a demand letter from Complainant’s counsel.
Respondent denies that it lacks rights or legitimate interests in the disputed domain name, and that it registered and is using the domain name in bad faith. In support thereof, Respondent notes, inter alia, that the domain name was registered in 1988, long before Complainant had even conceived of its LUCID trade name and marks. (Reference to Respondent’s other contentions is unnecessary in light of the Panel’s resolution of this matter.)
The Panel finds that Complainant has not met its burden of proving that Respondent registered and is using the disputed domain name <lucid.com> 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.
In light of the Panel’s finding as to the third element, the Panel declines to address the first and second elements.
Respondent claims that it registered the disputed domain name in 1988, a claim supported by the Whois registration data for the domain name as set forth in the Complaint and not disputed by Complainant. Complainant was founded in 1991 and adopted its LUCID marks subsequent to that date. Under these circumstances, Complainant clearly cannot demonstrate that the domain name was registered in bad faith. As in Proto Software, Inc. v. Vertical Axis, Inc., No. D2006-0905 (WIPO Oct. 10, 2006),
The disputed domain name was registered approximately 3 years prior to the application for registration of the Complainant’s trademark, and more than 4 years prior to the Complainant’s first use in commerce. Without evidence of special circumstances (for example, of the Respondent being aware of the Complainant’s potential rights or interests) the Complainant cannot establish any of the individual circumstances listed in paragraph 4(b)(i), (ii) or (iii) of the Policy or otherwise demonstrate registration in bad faith. It is well established by previous Panels that this section of the Policy requires a demonstration of both registration and use in bad faith. Even if it was possible to infer “use” in bad faith (which the Panel declines to make a finding on in this case) this limb of the Policy would not be satisfied and the Complainant’s case would fail.
The Panel concludes that Complainant in this matter has failed to meet its burden of proving bad faith registration.
In addition, based upon the present record, it appears that “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith,” id., and therefore a finding of Reverse Domain Name Hijacking may be warranted. However, the Panel is of the view that, in the facts of this particular case, additional information may shed more light on whether such a finding is appropriate. Whether to request such additional information is within the Panel’s sole discretion under Paragraph 12 of the Rules. However, under the circumstances presented here, since this additional information is not necessary for the Panel’s decision on the main issues of this case, in the interests of expediency the Panel declines to do so, and accordingly declines to enter a finding as to the question of Reverse Domain Name Hijacking.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, Chair
Dawn Osborne, Panelist
Jeffrey H. Kaufman, Panelist
Dated: December 17, 2007
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