Lucid Technologies, Inc. v.
Dynamo.com LLC c/o Spam Protected
Claim Number: FA0710001095287
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@lucid.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.)
FINDINGS
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.
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.
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.
DECISION
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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