AccountNow, Inc. v. Platen Company
Claim Number: FA0711001105710
Complainant is AccountNow, Inc. (“Complainant”), represented by Brian
R. Coleman, of Perkins Coie LLP, 101 Jefferson,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accountnow.com>, registered with Network Solutions, 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.
Complainant submitted a Complaint to the National Arbitration Forum
On November 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 5, 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 Response was received and determined to be deficient on
An Additional Submission was received from Complainant on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant AccountNow, Inc. provides financial services for consumers who do not have established credit or traditional banking relationships. Since 2006 Complainant has held a registered trademark for ACCOUNTNOW with the United States Patent and Trademark Office. It has used the name AccountNow, Inc. in connection with these services since 2005.
Complainant contends that the domain name in dispute is confusingly similar to its ACCOUNTNOW mark. Complainant contends that Respondent Platen Company is not affiliated with Complainant in any way and is not authorized to use Complainant’s mark. Because Respondent has not been licensed or authorized to use Complainant’s mark, Complainant contends that Respondent lacks rights or legitimate interests in the domain name.
Finally, Complainant contends the domain name was registered and used in bad faith. Complainant asserts that it is “extremely unlikely” that Respondent “simply devised the Domain Name on his own.” Complainant contends that Respondent’s bad faith is demonstrated by the fact that the domain name links to other commercial entities offering services that compete with those provided by Complainant. Furthermore, Complainant asserts that Respondent’s site contains hyperlinks having names different from the hyperlinked addresses to which the links resolve.
According to Respondent Platen Company the disputed domain name was initially registered in 1999. Respondent purchased the domain name in 2003. Respondent states that its various partnerships needed a comprehensive records system and it began using the name Accountnow as the entity to provide that structure.
Respondent states that while it was developing its system in the late 1990’s it saw that the <accountnow.com> name was taken. Hoping that the then owner, who was not actively using the domain name, would sell the name (which it did in 2003), Respondent registered other similar domain names.
Respondent states that to avoid any confusion with Complainant’s mark, the domain name will be used only for “outbound traffic” and “sending promotional information to selected prospects.” Respondent further states that Complainant has engaged in bad faith because Complainant registered its trademark despite the fact that two similar domain names (“Accountnow-1.com” and “accountnow.cc”) were already registered to Respondent.
Respondent denies that any links on its site resolve to competitors of Complainant.
C. Additional Submissions
Complainant states that the domain name is “parked” with sedo.com where it contains links to other financially-related businesses. Because neither Respondent nor the owner of the domain name prior to Respondent have actually used the domain name, Complainant alleges that Respondent can have no legitimate rights or interest in the domain name. According to Complainant using a mark of another to provide links to a competitor is evidence of bad faith where the domain name resolves to a “parked” site.
Respondent denies that it has ever had dealings with sedo.com and does not know how its domain name came to be parked with sedo.com. Respondent denies that it has given permission to anyone to “point Respondent’s domain to the website available at www.accountnow.com and has derived no revenue from the advertising found” on that side.
Respondent acknowledges that it is currently not using the domain name and that it only plans to use it for its pending business.
Respondent acquired the domain name on
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.
Respondent acquired the domain name on
The record supports Respondent’s contention that it
registered the <accountnow.com>
domain name prior to Complainant gaining any rights in the ACCOUNTNOW
mark. Policy ¶ 4(a)(iii)
requires not only bad faith use, but bad faith registration as well. Because Respondent registered the domain name
before Complainant acquired rights in its mark, Complainant is unable to
establish that Respondent registered the domain name in bad faith pursuant to
See Interep Nat'l Radio Sales,
Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: January 10, 2008
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National Arbitration Forum
purposes of this Decision the Panel accepts Complainant’s contention that
Respondent cannot claim any rights in the disputed domain name prior to
Respondent’s purchase of the disputed domain name on