Architel Holdings LLC v. ipond
Claim Number: FA0804001182336
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.”
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.
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.
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.
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.
Dated: June 13, 2008
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