National Arbitration Forum




Xoft Inc. v. Name Administration Inc. (BVI)

Claim Number: FA0802001154179



Complainant is Xoft Inc. (“Complainant”), represented by Aaron Hendelman, of Wilson Sonsini Goodrich & Rosati, California, USA.  Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.




The domain name at issue is <>, registered with Domain Name Sales Corp.



The undersigned each certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as a Panelist in this proceeding.


Honorable William Andrews as Panelist, the Honorable James A. Carmody as Panelist, and Sandra J. Franklin as Panelist and Panel Chairperson.



Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 29, 2008.


On March 3, 2008, Domain Name Sales Corp. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Domain Name Sales Corp. and that the Respondent is the current registrant of the name.  Domain Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. 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 March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 2008 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 by e-mail.


A timely Response was received and determined to be complete on April 3, 2008.


Complainant filed a timely Additional Submission on April 8, 2008, and Respondent filed a timely Additional Submission on April 14, 2008.


On April 9, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable William Andrews as Panelist, Honorable James A. Carmody as Panelist, and Sandra J. Franklin as Panelist and Panel Chairperson.



Complainant requests that the domain name be transferred from Respondent to Complainant.



            A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is confusingly similar to Complainant’s XOFT mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B. Respondent makes the following assertions:


1.  Respondent registered the <> domain name prior to Complainant   establishing rights in the XOFT mark.


2.  Respondent has a legitimate right to use the <> domain name in connection with the advertisement of adult material or “soft porn”.


3.   Respondent was not aware of Complainant’s use of XOFT and therefore could not have registered in bad faith.


C. Additional Submissions


1.      Complainant states in its Additional Submission that its mark XOFT is a coined mark with no suggestive meaning, that its rights in XOFT predate the domain name registration, and that Respondent’s use of <> domain name is offensive.  Complainant also reiterates that Respondent has engaged in a pattern of registering domain names containing the marks of others.



2.  Respondent states in its Additional Submission that there have been 16 UDRP decisions in Respondent’s favor, that the term XOFT was conceived of by an Austrian party as early as 2000, and that Complainant had filed and abandoned Intent-to-Use trademark applications for XOFT more than once.  Respondent also reiterates its use of <> domain name as suggestive of soft porn.



The earliest trademark registration held by Complainant for XOFT was filed as an Intent-to-Use application on September 16, 2004, showing a first use date of December, 2005.  Respondent registered the<> domain name in September 2004 and uses it in connection with the advertisement of adult material or “soft porn”.



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 relevant time for the determination of whether or not Complainant has rights in a mark is the time that Respondent registered the disputed domain name.  See Decani Monastery v. Info-Bridge, FA 639116 (Nat. Arb. Forum April 7, 2006) (where the Panel in its denial noted that the question to be answered is whether or not Complainant’s rights existed at the time of Respondent’s domain name registration).  In this case, Respondent registered the <> domain name on September 28, 2004.  The question for this Panel is what rights had Complainant demonstrated in the mark XOFT on that date?  Complainant’s earliest trademark registration is based on an Intent-to-Use application for XOFT, filed on September 16, 2004, which records a first use date of December 2005.  While Complainant’s filing date is 12 days before Respondent’s domain name registration, the filing is only based on the intent to use, not enough to constitute rights superior to Respondent’s, when Complainant’s first recorded commercial use is at least 14 months later.  What further frustrates Complainant’s claim to superior rights is its previous abandonment of two trademark applications for XOFT on August 20, 2003, and again on May 13, 2004.  Even if Respondent had known of Complainant’s pending trademark application when it filed the disputed domain name, which Respondent denies, it would have been reasonable to suspect that Complainant might again be unable to maintain the application, quite possibly for lack of commercial use. 


While Complainant could have demonstrated to the USPTO, or to this Panel, that it had established rights in the mark prior to December 2005, it did not.  All of the evidence in the record suggests first commercial use of XOFT by Complainant beginning in 2005.  See Saint Francis Hosp. and Med. Ctr. v. Registrant, D2006-0543, (WIPO June 19, 2006) (where the Panel found that no evidence was produced to support allegation of Complainant’s superior common law rights and denied the Complaint).


If the above is not enough, Respondent also provided evidence of its back-order for the <> domain name dated August 23, 2004, before Complainant even filed its eventually-successful Intent-to-Use application for XOFT.  When the domain name became available, Respondent became the successful bidder at auction for the domain name <>.


For all of the above reasons, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i) and its Complaint therefore fails, making it unnecessary to examine the remaining two elements of the Policy.




Having failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.





Sandra J. Franklin, Panelist and Panel Chairperson

Honorable William Andrews, Panelist

Honorable James A. Carmody, Panelist

Dated: April 25, 2008




Click Here to return to the main Domain Decisions Page.


Click Here to return to our Home Page


National Arbitration Forum