Architel Holdings LLC v.
ipond
Claim Number: FA0804001182336
PARTIES
Complainant is Architel Holdings LLC (“Complainant”), represented by Alexander
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <socialmail.com>, registered with Godaddy.com,
Inc.
PANEL
The undersigned 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 Panelist in this proceeding.
R.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 30, 2008; the
National Arbitration Forum received a hard copy of the Complaint on May 6, 2008.
On May 1, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <socialmail.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 May 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 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 postmaster@socialmail.com by e-mail.
A timely Response was received and determined to be complete on May 15, 2008.
On May 22, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that Respondent launched an email service called
“SocialMail” in conjunction with a website called <socialmail.com> in December of 2006. Complainant asserts that it contacted
Respondent and informed Respondent that it already had a competing service
called “SocialMail” and that the disputed domain name infringed upon their
mark.
Complainant asserts that Respondent initially agreed to transfer the
domain name, <socialmail.com>
then reneged and offered to sell the domain name for $100,000.00.
Complainant asserts, instead of transferring the domain name, that Respondent
used the domain name to redirect traffic to Respondent’s own competing service,
<grouptivity.com>. Respondent also asserts that Respondent has
never used the name in trade.
Complainant asserts that Respondent just keeps the domain name active to
redirect Complainant’s user to the <grouptivity.com>. Finally, Complainant alleges bad faith, as
evidenced by the use of <socialmail.com>
to redirect traffic to <grouptivity.com>. This means, says the Complainant, that
“Respondent’s current use of the domain name is NOW and (sic) intentional act
to attract for commercial gain Internet users to Respondent’s website by creating
confusion with Complaint’s mark as to the source, sponsorship, affiliation,
ownership, or endorsement of Respondent’s website.”
B. Respondent
In response, Respondent asserts that on December 1, 2006, Respondent
was approached by Complainant asserting a conflict between the use of <socialmail.com> and a service
that Complainant provided. After that,
Respondent asserts that it was left with the impression that Complainant did
not intend to pursue the issue.
Then Respondent says that on November 14, 2006, he had the impression
that Complainant was not going to pursue the issue (of course, the two dates do
not make any sense). Respondent then
says that on December 1, 2006, the Complainant filed for a trademark application
with the U.S. Patent and Trademark Office.
Respondent goes on to say that it never offered to abandon the use of <socialmail.com> or any related
mark and that negotiations between the parties got very nasty.
Respondent asserts that the mark is a particularly weak mark.
FINDINGS
Neither party has set out a very clear set of
facts. However, it is certainly clear
that the application for and registration of the mark which Complainant asserts
that it holds came long after the registration of the <socialmail.com> domain name.
No application was made for the mark until
December 2006, and the mark was not issued by the U.S. Patent and Trademark
Office until September 25, 2007.
Conversely, in Complainant’s own pleadings it states that <socialmail.com> had been
registered before Complainant ever filed for a mark. In fact, the domain name was registered by
Respondent in September of 2002.
Given that it is axiomatic that Complainant’s rights in the marks must predate Respondent’s registration or at least predate Respondent’s use of the domain name, it is impossible to find for Complainant under the circumstances. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
Further, the use of two generic words like “social” and “mail” to create either a mark or a domain name creates very little in the way of protectable rights as far as this Panelist is concerned. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000).
As to rights and interests in the name, neither party did a particularly good job of elucidating this issue. However, it clearly appears that Respondent, who did not respond at all to Complainant’s prima facie allegations, certainly had rights in the name, for it was using the name long before Complainant came along.
It is impossible to find bad faith when the
domain name has been registered and in use for four years prior to any assertion
in rights to a mark. Therefore, although
there is some allegation of bad faith by Complainant and a denial by
Respondent, it is impossible to see bad faith in this case.
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.
While the mark and the domain name are
identical, the domain name long predated the mark.
Because the domain name long predates the
mark, it is axiomatic that the Respondent had rights in the mark which predated
those of Complainant.
As to bad faith, the Panelist cannot find bad
faith when the holder of the late filed mark is trying to divest a pre-existing
holder and user of a domain name.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <socialmail.com> domain name be shall
NOT BE TRANSFERRED from
Respondent to Complainant.
R.
Dated: June 13, 2008
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