ProjectExchange Inc. v. Web Time
Claim Number: FA0204000109703
Complainant is ProjectExchange Inc., St. Johnsbury, VT, USA (“Complainant”) represented by Jean D. Desrochers. Respondent is Web Time, Charleston, SC, USA (“Respondent”) represented by Zak Muscovitch.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webtime.com>, registered with Network Solutions.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 12, 2002; the Forum received a hard copy of the Complaint on April 15, 2002.
On April 19, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <webtime.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 April 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 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 email@example.com by e-mail.
A timely Response was received on May 13, 2002, but the exhibits were received on May 14, 2002 after the Response deadline.
The Panel considered the exhibits received on May 14, 2002, under the authority of Rule 10(b) of the Rules for Uniform Domain Name Dispute Resolution Policy.
On May 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is ProjectExchange, Inc. of St. Johnsbury, Vermont.
Complainant is successor in interest of IMS Information Management Services, Inc.
Complainant is registrant of a trademark for the word “Webtime.” “Webtime” was registered with the United States Patent and Trademark Office July 21, 1998.
Complainant’s trademark and the domain name registered by Respondent are identical.
Respondent operates a pornographic web site, which is a gateway to other pornographic sites. This does not constitute a bona fide offering of goods or services.
Respondent has not been commonly known as “Webtime.”
Internet users expect to find information regarding Complainant’s product on Respondent’s web site. This causes harm to Complainant’s business practices and tarnishes Complainant’s trademark.
Complainant cannot verify the identification of Respondent and is unsure if Respondent is a competitor.
Complainant believes that Respondent registered the disputed domain name in bad faith because Respondent is a competitor of Complainant and registered the domain name for the purpose of disrupting Complainant’s business.
Complainant sent letters dated September 27, 2000, and March 22, 2002, notifying Respondent of Complainant’s trademark rights and requesting Respondent to discontinue the use of WEBTIME web site as well as to remove WEBTIME from meta tags immediately. No response was received. This is evidence of bad faith.
Respondent is an individual residing in Charleston, South Carolina.
Respondent is in the business of operating a web site at <WEBTIME.COM> that consists primarily of links to various adult-oriented businesses with which Respondent has an affiliate relationship. Respondent earns commissions on traffic directed to such sites through a so-called “affiliate program.”
The sites to which traffic is directed through Respondent’s web site are pornographic related web sites, but such sites are entirely legal in nature.
Complainant has produced no evidence that it owns the trademark registration for WEBTIME.
WEBTIME is a generic name capable of many applications and uses. The first person to register a generic domain name in good faith is entitled to the domain name.
Trademarks may be used by several different persons in connection with different products or services.
The word WEBTIME is in widespread use.
There can be no bad faith found by failure of Respondent to reply to the letter of Complainant since Respondent has no legal responsibility to respond.
Respondent cannot be found to have registered and used the domain name <WEBTIME.COM> in bad faith since the domain name was registered in 1995 and the trademark, WEBTIME, was not registered until 1998. Respondent could not have heard of Complainant in 1995.
Respondent notified Complainant on April 29, 2002, that Respondent was not a competitor of Complainant. Complainant refused to terminate this domain name dispute proceeding and is guilty of Reverse Domain Name Hijacking.
Complainant was aware that Respondent was not a competitor of Complainant.
Respondent concedes that the disputed domain name and the trademark are identical.
Complainant presents no evidence that Respondent has no rights and interests in the domain name, nor is any evidence presented that Respondent acted in bad faith.
C. Additional Submissions
1. Complainant is a corporation. The business of the corporation is not revealed in the pleadings.
2. An organization listed as Information Management Services, Inc. owns a trademark registered with the United States Patent and Trademark Office for the trademark, WEBTIME. The registration was effective on July 21, 1998. The registration shows first use in commerce as September 1996.
3. Complainant contends that it is the successor in interest of the organization, IMS Information Management Services, Inc. This contention is not contested, and it is taken as true.
4. No evidence is presented that either ProjectExchange Inc., the Complainant, or IMS Information Management Services, Inc. are related in any manner with Information Management Services, Inc., the holder of the trademark.
5. The trademark, WEBTIME, and the domain name, <WEBTIME.COM> are identical.
6. Complainant presents no evidence that it and Respondent are competitors, since the business of Complainant is not stated in the pleadings.
7. Complainant has not shown that Respondent has no rights or legitimate interests in the domain name, <WEBTIME.COM>.
8. No evidence is presented to prove that Respondent registered and used the domain name in bad faith.
9. Respondent first registered the domain name on July 28, 1995, prior to the first use in commerce by the organization, Information Management Services, Inc. of the term WEBTIME. No evidence is presented that Complainant, or any other person or organization possessed common law rights or other interest deserving trademark protection during the year 1995 or at any time prior to the year 1996.
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
The first element Complainant must prove is that it has rights in the trademark in question before the issue of whether the trademark and domain name are identical or confusingly similar must be decided. In this case Complainant attaches as an exhibit a trademark registration for the trademark, WEBTIME, in the name of Information Management Services, Inc. Complainant contends that its name is ProjectExchange Inc., which is the successor in interest to an organization called IMS Information Management Services, Inc. No relationship is alleged between either of these and Information Management Services, Inc. Respondent challenges this failure to allege and show the relationship of these organizations and moves that the Complaint be dismissed on the ground that Complainant has failed to prove any right in the trademark, WEBTIME. Respondent may be correct in this assertion but the Panel will not base its decision on this issue. This case does not require a decision on this point to dispose of this domain name dispute proceeding. Respondent concedes that the trademark owned by Information Management Services, Inc. and the domain name, <WEBTIME.COM>, are identical. Respondent is correct.
The addition of the generic top-level domain (gTLD) “.com” after a name has no effect in creating any difference between a trademark and a domain name. See Pomellato S.P.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000); See Also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); See Also Entrepreneur Media, Inc. v. Smith, 279 F.3d. 1135 (9th Cir. 2002).
Complainant prevails on this point.
Rights or Legitimate Interests
Complainant bears the burden of showing that Respondent has no rights or legitimate interests in respect of the domain name. Complainant makes two contentions. The first is that, “To the best of our knowledge, Respondent of the dispute has not been commonly known by the domain name.” Complainant presents no evidence as to the truth of this statement. Respondent fails to contest this allegation or contend that Respondent has been commonly known as WEBTIME, so this is taken as uncontested and proved.
Complainant’s next contention is that Respondent offers no bona fide goods or services because Respondent’s web site is pornographic site and a gateway to other pornographic sites. Respondent concedes that its web site exists primarily of links to various adult-oriented businesses of a pornographic nature. Respondent is paid a commission for such services. But Respondent contends that such links are entirely legal in nature. Neither party offers any evidence or citation of authority to support their assertions.
The Panel notes that domain name decisions are not consistent on this issue. One Panel stated, “The use of a domain name to direct internet users to other web sites which may offer goods or services does not constitute use of the domain name for a bona fide offering of goods or services” when related to a pornographic site. Women in Military Serv. for Am. Mem’l Found., Inc. v. Russian Web Mktg, D2001-0610 (WIPO July 11, 2001). Another Panel was not satisfied that the Complainant had shown that the Respondent has no rights or legitimate interests in the Domain Name where “Respondent has shown that TSTV is recognized as an abbreviation for ‘Transsexual and Transvestite’ and that it is so used in the relevant section of the pornographic industry. Accordingly, the Respondent appears to have used the domain name in connection with the bona fide offering of such services to customers…Respondent has provided corroborated reasons for his adoption of the domain name and of his continued use of it in the bona fide conduct of his business.” Toronto Star Newspapers Ltd v. Virtual Dates Inc. D2000-1612 (WIPO Feb. 6, 2001). See also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000); See Also Coral Tradeworks, Ltd v. Eastern Net, Inc., D2000-1295 (WIPO 26, 2000); See Also Lycos Asia Ltd. v. Buy This Name, D2001-0828 (WIPO Aug. 17, 2001).
Respondent contends that before any notice of the dispute Respondent used the domain name in connection with a bona fide offering of goods or services. It is certainly true that Respondent registered the domain name at least one year prior to Complainant’s first use of the word WEBTIME in commerce. Complainant could have had no legitimate rights or interest in the name WEBTIME at the time of the domain name registration. As between the parties to this domain name dispute, only Respondent could have had legitimate rights and interests in the domain name at the time of registration.
But it is not necessary to decide this domain name dispute on the basis of rights and legitimate interests, or to reconcile the authorities in this respect. The failure of Complainant to prevail on the bad faith issue resolves the case in favor of Respondent.
Registration and Use in Bad Faith
The burden is upon Complainant to prove that Respondent’s domain name “has been registered and is being used in bad faith.”
It is clear from a review of the domain name registration documents and the trademark registration documents attached to the pleadings in this case that the domain name was registered by Respondent in 1995 and that the trademark registration was granted to Information Management Services, Inc. in 1998 showing first use in commerce in 1996.
“There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICAAN Policy, since it is impossible for the domain name to have been registered in bad faith.” Ode v. Intership Limited, D2001-0074 (WIPO May 1, 2001), and cases cited therein.
Each of the circumstances listed in Paragraph 4(b) which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith presuppose the existence of a trademark, whether registered or common law, at the time of registration of the disputed domain name. Complainant had no trademark in existence at the time the disputed domain name was registered by Respondent. The domain name, <WEBTIME.COM> is not shown to have been registered in bad faith.
After considering the submissions the Panel finds that the Complaint was not brought in bad faith in an attempt at Reverse Domain Name Hijacking nor was it brought primarily to harass the domain name holder. Respondent’s request for a finding of Reverse Domain Name Hijacking is refused.
THE COMPLAINT OF PROJECTEXCHANGE INC., AGAINST WEB TIME IS DISMISSED AND THE REQUESTED TRANSFER OF THE DOMAIN NAME, <WEBTIME.COM>, IS DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 7, 2001
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