National Arbitration Forum
DECISION
NETtime Solutions LLC v.
NetTime Inc. c/o Chad
Wagner
Claim Number: FA0810001230152
PARTIES
Complainant is NETtime Solutions LLC (“Complainant”),
Arizona, USA. Respondent is NetTime Inc. c/o Chad Wagner (“Respondent”), represented by Robert D. McDonald, of Fraser Milner Casgrain LLP, Barristers
& Solicitors, Alberta, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nettime.com>, registered with Tucows Inc.
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on October 20, 2008;
the Forum received a hard copy of the Complaint on October 30, 2008.
On October 21, 2008, Tucows Inc. (“Tucows”) confirmed by e-mail to
the Forum that the <nettime.com> domain name (“the
disputed domain name”) was registered with it
and that Respondent was the current registrant of the name. Tucows has
verified that Respondent is bound by its 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 November 5, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of November 25, 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@nettime.com by e-mail.
A timely Response was received and determined to be complete on November 24, 2008.
Additional Submissions were received from Complainant on December 1,
2008 and from Respondent
on December 5, 2008 both of which were determined to be timely and complete
pursuant to Supplemental Rule 7.
On December 5, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Mr. David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is an online time
and attendance company with principal offices in Scottsdale, Arizona. It conducts business throughout the United States
and has been operating continuously since 1995.
Complainant owns the trademark NETTIME which was filed April 24, 2001
with the United States Patent and Trademark Office and was finalized as
Registration Number 2,960,030.
The principal product offered
for sale and service by Complainant is called “NETtime.”
This is a web-based time-and-attendance hosting service, which tracks and
manages, inter alia, employee’s hours, vacation times, calendars, tasks, and
schedules. Co-branded or re-branded
iterations of it are used by some of the largest companies in the United States.
Respondent is in control of the
disputed domain name <nettime.com> which is identical to Complainant’s
trademark, and Complainant contends that his refusal to relinquish control of
the name explicitly infringes on the legal rights of its appurtenant to its
trademark as well as its rights under the UDRP and other applicable laws. Complainant contends that Respondent is
“squatting” on the disputed domain name in bad faith and that furthermore he is
benefitting from the goodwill associated with its “NETtime” products because
the name is identical to Complainant’s registered trademark. Respondent has rejected reasonable offers to
purchase the disputed domain name, and has indicated to Complainant that he
intends to profit from its sale to the tune of US $200,000.00.
Complainant
alleges that Respondent formerly ran an internet-terminal hardware company from
1995 until some time in 1997.
According to evidence from his e-mails to Complainant and from archive
material, Respondent’s company and the disputed domain name have been in a
dormant state since at least December 30, 1996.
Since that time, the site at the disputed domain name has never had substantive
content. From 1996 until 2008, the
website has only been altered once, some time in 2003, when a sentence was
changed to reflect that the company no longer conducted business. However, it was recently modified, in May 2008,
after Complainant contacted Respondent asking him to relinquish control or face
referral for misuse under the UDRP.
Complainant contends that
Respondent is in a position to unjustly benefit from the goodwill associated
with its NETtime name. Respondent’s
company has been dormant for at least ten years, however, he has represented he
may re-start his company at a later time.
In the years that his business has remained dead or dormant, Complainant has
continued doing business from coast to coast.
In this time, it has partnered with Fortune 500 companies, providing them with
time-and-attendance software and services, and it continues to directly engage
in business with thousands of other companies.
Complainant
contends that Respondent has represented that he uses the disputed domain name
as his e-mail address. This is
accomplished by “mail forwarding” and the position does nothing to rectify his
now-unlawful use of the disputed domain name.
Respondent indicated to Complainant that his company has not been operational
for eleven years and that “maybe we could
do something [with this domain] in the future.”
Complainant contends that Respondent’s
use of the domain NETTIME.com
is not, nor has it been in the past, in connection with a bona fide offering of
goods or services. Furthermore, a
search of the relevant website for Canadian trademarks (which was annexed to
the Complaint) shows that Respondent does not hold any Canadian Trademarks or
rights to the name NETTIME.
Complainant contends that, aside
from infringing on its rights, the disputed domain name has been crippled by
Respondent’s non-use of it. Further,
as the name is identical to Complainant’s trademark, visitors to the website at
it could be easily confused or misled into believing that Complainant’s company
website is non-operational.
Annexed to the Complaint were copies of correspondence exchanged
between the parties which, Complainant contends, are evidence that Respondent
is acting in bad faith and has taken advantage of his position vis-à-vis the
disputed domain name. Complainant further contends that Respondent
has made failed attempts at “baiting” it into thinking there would be a
bidding war for the name, presumably to generate greater revenue from its sale. These bad faith actions have substantially
interfered with Complainant’s business in connection with its registered
trademark.
B. Respondent
[a.] Trademark.
Respondent, Mr. Chad Wagner, agrees that the disputed domain name <nettime.com>
contains the word "NETTIME" which is the subject of a U.S. trademark
registration by the Complainant. However, he points out that the law is clear
that trademark rights arise as a result of the use of a trademark, and not
merely registration. He further
contends that Complainant has made the erroneous assumption that a registration
of a trademark in the United States grants any rights or entitlement to the
owner of such mark in other jurisdictions, including Canada and it is quite
possible for confusingly similar or even identical marks to be owned by
different parties in Canada and the United States respectively. Again, a party's entitlement to a trademark is
governed by that party's date of first use of it and its ongoing use, and he attached to the Response evidence that “…the right to a trademark is created by use
in Canada,
not by registration….”
He concludes that
even if Complainant is able to assert certain trademark rights to the name
"NETTIME" in the United States, such rights do not extend to Canada,
and most certainly do not supersede the rights of Respondent to use such
trademark based on its prior use, nor do such rights supersede the Respondent's
right to register a domain name containing its trademark.
[b] Legitimate
rights and interests.
Respondent also contends
that in fact he has considerable rights and legitimate interests in respect of
the disputed domain name.
Respondent, Mr. Wagner, states that the Respondent company, NetTime Inc.,
is a legal entity, which was incorporated in Alberta,
Canada,
on October 24, 1995, and he alleges that this is sufficient to demonstrate that
he has the right to register and use a domain name comprising this company’s
legal corporate name. NetTime Inc. has remained a validly subsisting legal entity
since its date of Incorporation.
Attached to the Response were copies of documents proving these facts. Respondent
contends that Complainant's US trademark is based on a date of first use of
February 17, 2005 and that, as his company came into existence as a legal
entity in 1995, some 10 years before the Complainant obtained this registration
for NETTIME and that as it has remained a valid legal entity since that time,
Respondent has clear and unequivocal first use of the name NETTIME. Respondent annexed an official copy Complainant's U.S. trademark
registration showing the registration date of 2005 and the claimed date of
first use of 2005 and questions whether this mark is even valid or whether it
would withstand a legal challenge.
Under Alberta law, it is
necessary to obtain a name search, commonly known as a NUANS search, prior to
the Registrar of Corporations granting the use of a corporate name to a new
entity. Respondent duly conducted
such a NUANS search on September 27, 1995, which reveals that the name NETTIME
was available in Canada
as a corporate name, and it also makes no reference to Complainant. On the same date that this NUANS report was filed
with the Registrar of Corporations, namely October 24, 1995, Respondent
obtained a registration of the disputed domain name.
Respondent was an
active Alberta
corporation in 1995 and has always remained an active corporation up to and
including the present date.
Respondent created the first public internet kiosk in North America, which was
installed at the Edmonton
International Airport
in 1995. Respondent is a recognized
pioneer in the Internet business, and in fact, its original Internet kiosk is
now part of the collection of the Canadian Science and Technology Museum. Respondent has been a leader in the advancement of
technology, has contributed valuably to technology since the early days of the
Internet. and
continues to develop products and technologies.
Respondent has
utilized the name "NetTime Inc."
as its corporate identity and as its trademark since the inception of the
company in 1995. Respondent's e-mail
accounts on the disputed domain name are his primary method of communication
with his client base, and dozens of e-mails per day are processed through it. Since its inception, Respondent claims to have
built a strong client base which relies on its domain name and e-mail accounts
for its primary communication, and such e-mail accounts are a vital link to
maintaining these business relationships.
[c] Bad Faith.
Respondent
registered the disputed domain name concurrently with the registration of its
legal corporate name on October 24th, 1995, and the domain name is comprised
solely of the Respondent's corporate name followed by the ".com" suffix.
Respondent has carried on doing business under this name and made bona fide use of the name in commerce,
and continues to do so to this day.
Complainant was not even in existence at that time, and did not even commence
use of the trademark NETtime until 10 years following Respondent's first use. Respondent contends that to suggest therefore that
it has in any way acted in bad faith in registering its domain name is absurd. Complainant's statements that Respondent's company
is "defunct" and that Respondent stated that the "business has
been dormant for years" are simply incorrect.
Respondent stated only that "we have
not done much with the company over the last 10 years", which is not
an admission that the company has been dormant,
but simply not as active as it once was.
Respondent therefore concludes that Complainant is misstating facts and misquoting its own written
words.
Complainant has
claimed that Respondent intends to profit from the sale of the disputed domain
name and enclosed copies of e-mails between the parties in which Complainant
suggests that Respondent offered to sell the domain name for $200,000. However, it was Complainant who first approached
Respondent and offered to buy the domain name for $500, Respondent never
approached Complainant to sell the domain name and, as any reasonable party
would do when presented with any offer, Respondent considered this offer,
determined it to be unreasonable, and provided a counter proposal . However, this counter-offer was not simply to sell
the domain name as suggested by the Complainant, but to sell the entire
company, which would include the domain name.
Respondent has had other parties approach it in the past offering to purchase
its domain name, and it has turned down these offers.
Annexed to the Response was a copy of an e-mail dated February 17th, 2006 from
SVT Electronics Inc offering to purchase Respondent's domain name.
Respondent has
maintained and actively used its website since its inception, and the fact that
the content of the web page at the site has remained static is irrelevant to
the issue of whether it has been used in good faith.
Indeed, the website, though static, provides those that would access it with
the contact information they need to reach Respondent.
Further, the e-mail accounts listed on the disputed domain name are active and
are invaluable to Respondent as a primary source of communication with its
clients and potential clients, and the domain is in fact used for that purpose.
Respondent
maintains that, based on the principles of first use, if any party has the
right to goodwill in the trademark "Nettime", it is Respondent
himself, who has used the mark in good faith since 1995, well in advance of
Complainant's claimed date of first use.
C. Additional
Submissions
Complainant
Complainant states
that the Policy requires only that a disputed domain name should be identical
or confusingly similar to a trademark in which a Complainant has rights. Therefore, Respondent’s submissions on trademark
law are wholly irrelevant.
Respondent’s arguments that Canadian trademark law grants rights by virtue of
use hold no water for two reasons.
Firstly, because
this cannot survive a business’s extended period of dormancy. Respondent has provided no evidence of its
continued legitimate use of the name “Nettime” and indeed has stated that all
the hardware associated with the “Nettime” company is now in a museum. Thus it is no longer an active business entity for
its original purpose and has lost its right to the name ‘Nettime’ because of
this inactivity.
Secondly, because
although Respondent states that Canadian law does not recognise
foreign-registered trademarks, the statement of Canadian law filed by
Respondent specifically states that there is an exception for trademarks that
have been registered and used abroad in a country that is a member of the
International Convention for the protection of Industrial and Intellectual
Property – which the USA is.
Complainant
therefore concludes that it has the exclusive authority to use the name NETTIME
under both US and Canadian law.
Respondent’s
argument that Complainant only started to use its trademark NETTIME in 2005 is
incorrect. That was the year when
its trademark registration was finalized in the USA and in fact the real date of
first use was some time in 2000. The
product started life under the name “MyVitrix” but this was changed to
“NETtime” in 2001 when the first trademark application was filed.
Complainant
contends that, although Respondent may have conducted the appropriate searches
in 1995 when it first registered the “Nettime” company name, it is no longer in
business as the same company which sold internet kiosks some 14 years ago. Complainant points out that no evidence has been
presented as to what the current nature of Respondent’s business may be, if
anything at all. Whenever Respondent
ceased its legitimate use of the NETTIME name it extinguished any acquired
rights it may have had. If
Respondent is holding on to the name as a non-use “shell” corporation into which
a future endeavour can be moved, it has every right to do so, but Complainant
contends that this does not mean that the trademark rights stay with this
dormant shell. Furthermore, any
claim that the name is being used for consulting services is wrong because one
cannot say that that such a business is the same as a previously owned company
owned by a consultant who used to own a company unrelated to the consulting
business.
Complainant
contends that it has been using the name NETTIME for longer than Respondent and
that this use has been continuous, uninterrupted, and throughout the USA
and several foreign nations.
Complainant
asserts that it has never been in question that Respondent used to have a
company that installed internet kiosks or that such kiosks were built and used,
or that that company was once viable, but the fact remains that Respondent has
admitted to squatting on the name with a view to “doing something with it in the future.”
Complainant
questions Respondent’s claim that it relies upon the disputed domain name as
its primary method of communication and for responses to dozens of e-mails per
day. Complainant alleges, firstly,
that if Respondent has not produced any internet kiosks for 14 years then to
what is this alleged base referring and, secondly, that the website at the
disputed domain name does not, and has not since 1996, contained any
information through which anyone could contact the Respondent. Indeed, Complainant itself had difficulty in
locating and contacting Respondent.
Complainant
ridicules Respondent’s claim that the fact that its website has remained static
is irrelevant to a bad faith claim, stating that non-use shows that Respondent
has no legitimately viable purpose for continuing to possess the disputed
domain name, but only to profit from its future possible sale.
Respondent
Respondent points
out that he already admitted in his Response that the disputed domain name
contains the word "NETTIME" which is the subject of Complainant’s US trademark
registration. Respondent also agrees
that this dispute is not a trademark dispute and that
trademark law principles, particularly those dealing with ongoing use of
a trademark in commerce, are not relevant.
Respondent states
that it does not accept, and never has, that Complainant holds valid trademark
rights in the NETTIME trademark.
Whilst accepting that Complainant is the owner of a U.S
trademark registration, Respondent contends that the validity of that
registration, as well as the effect of that registration on Respondent's rights
to use the NETTIME business name, trademark and domain name are in serious
question. It is wrong for
Complainant to misstate the facts when it states again that the Respondent's
business has had an "extended period of dormancy", when the facts and
documents clearly show that the business is a validly subsisting legal entity,
which has maintained its business name and domain name in good standing since
the inception of the business in 1995.
Complainant refers
to Canadian trademark law and argues that Respondent has lost its rights to the
NETTIME name due to the inactivity of the original business. First, as Complainant admits, this is not a
trademark dispute and thus discussions of trademark usage and Canadian
trademark rights are irrelevant and further, under Canadian trademark law a US
registration gives no rights whatsoever in Canada unless registered in Canada,
which is not the case here. What is
relevant is whether the Respondent has any rights or legitimate interests in
respect of the disputed domain name.
Respondent
registered the disputed domain name "nettime.com"
AFTER it had duly incorporated a corporate entity in 1995 bearing the same name. It has continued to keep the business entity and
the domain name active, despite its business activities evolving and becoming
less active in certain aspects over the years.
It continues to use an e-mail address with the "@nettime.com" suffix for its ongoing communications
and, as a demonstration of the continued use the name NETTIME and the ongoing
and continued activity of its business, Respondent annexed a copy of an e-mail
from John Blois, a principle of NetTime Inc.
to Chad Wagner, another principle of NetTime Inc.,
dated December 13, 2005. This e-mail sets out the Minutes of a Meeting of
NetTime Inc. that took place on
December 12, 2005, at 1100 a.m. in which a number of things relating to the
business of NetTime were discussed, including issues regarding the ATB and RBC
bank accounts of NetTime Inc., the
purchase of a phone as a possible software development opportunity, and
discussions of a five year plan.
Respondent contends that this e-mail is evidence not only that it was actively
carrying on business using the NETTIME trademark and business name, but was
dealing with active bank accounts, purchasing assets, and considering business
opportunities in 2005 . Respondent
therefore maintains that there can be no question that it has rights and
legitimate interests in the disputed domain name and that Complainant has not
proven that it has not.
With regard to
Complainant’s assertion that the domain name has been registered and is being
used in bad faith, Respondent reiterates that its evidence shows clearly that
the domain name was registered in good faith.
Furthermore, there has been no bad faith use because it has maintained the
domain name in association with a duly incorporated and legally active
corporation bearing the identical name, and has continued to keep a webpage and
an active e-mail account which it uses for ongoing business purposes.
Complainant's assertion that consulting services cannot be provided by
a corporate entity is incorrect in law and absurd.
Respondent contends that it continues to develop products and technologies, and
to explore business opportunities.
Furthermore it is not correct that Complainant's has been using the NETTIME
name for a longer period of time.
Complainant's assertion that the Respondent has admitted to squatting is
entirely fabricated and unsupported by the evidence.
The words "we have not done much
with the company. . ."
merely indicates that the company is in fact still active, though less so than
in prior years. In a domain name
dispute, the extent of a party's business, or whether the activities of that
business have decreased, is irrelevant.
DISCUSSION AND FINDINGS
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
Complainant owns a registration in the US of the
trademark NETTIME, No. 2960030 which
was filed on April 24, 2001, but not registered until June 7, 2005. Complainant has not filed a copy of this
registration, but Respondent provided a copy.
Complainant also claims to have used the name NETtime since 2000 and, if so, it
could also have accumulated common law rights in this name. However no actual evidence of such use has been
submitted, even though some was promised in Complainant’s Additional Submission.
Both parties have argued extensively on points of
trademark law, especially in Canada. However this is completely irrelevant to the
matter as paragraph 4(a)(i) asks only that a Respondent’s domain name should be “identical or confusingly similar to a
trademark or service mark in which the Complainant has rights.” It is not pertinent where those trademark
rights exist.
For the purposes of comparing a trademark with a domain name under the
Policy, it is customary to disregard any generic top-level domain name. See Abt Electrics.,
Inc. v.
Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) in which it was said that “The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s
ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.”);
see also Blue Sky Software Corporation v.
Digital Sierra, Inc.,
D2000-0165 (WIPO April 27, 2000) in which it was held that the domain name
<robohelp.com> was identical
to the complainant’s registered ROBOHELP trademark, and that the “addition of .com
is not a distinguishing difference”.
Using these principles, the Panel
has no difficulty in finding that the disputed domain name <nettime.com> is
identical to the trademark NETTIME – and indeed Respondent has admitted as much
– so paragraph 4(a)(i) is proved.
Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a Complainant must first make out a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name and if so, the
burden shifts to Respondent to show it does have rights or legitimate interests. The Panel believes that in this instance
Complainant has made out such a case, but that Respondent has succeeded in
refuting it.
Complainant has
leveled a number of charges against Respondent – that his refusal to relinquish
the domain name “infringes on its legal rights; that he is squatting on the
domain name in bad faith; that he is benefitting unjustly from Complainant’s
goodwill; that he has rejected reasonable offers to purchase the domain name; that
he intends to profit from the name to the tune of $200,000.00; that his company
has been dormant for at least 10 years; that his use of the domain name has not
been in connection with bona fide
offering of goods and services; that the domain name has been crippled by its
non-use; that by ceasing to trade Respondent has extinguished his rights in the
name.
In the view of the
Panel most of these are fanciful.
Respondent has
proved, to the Panel’s satisfaction, that a company called Nettime Inc. was registered in Canada in 1995. This was before Complainant adopted the same name
as a trademark. The Panel is also
satisfied that Respondent was actively engaged in business in 1995, creating an
original internet kiosk which was installed at that time in Edmonton airport.
Respondent has not provided any information as to when it was removed from the
airport, but a photograph of the kiosk in situ and in use has been provided. It is not obvious from this whether the terminal
carried the name NETTIME, but if so it will presumably have been seen by
hundreds of travellers passing through the airport.
The kiosk is now in a museum where, again, the name will be seen by any
visitors. Respondent has provided
little by way of evidence that the name has been used after 1995, although the
website at the disputed domain name states that Respondent provided internet
access terminals from 1995 to 1997.
Complainant claims
to have begun to use the trade mark NETTIME in about 2000.
However it has provided no evidence of use.
Thus we only have their word to support their claim to have a substantial
business, and although they claim to have commenced use in 2000, the copy of
the trademark registration supplied by Respondent clearly states that it was
first used in commerce on February 17, 2005, and the Panel has verified, from
the USPTO records that this is correct.
This was some 10 years after the first use by Respondent. Thus, on the face of it, Respondent has clear
rights of first use.
However, set
against this is Complainant’s allegation that Respondent has not traded for
many years, that the company Nettime Inc.
is now defunct and that, as a result, the name has been “crippled”. In an e-mail from Respondent to Complainant earlier
this year, the former admits to not having done much with the company over the
preceding 10 years and Complainant pounces on this as proof that it is now
dormant. However, Respondent comes
back with the explanation that the statement simply means that the company is
less active than it was.
Respondent also
produces a copy of an e-mail dated December 13, 2005.
The sender is a Mr. Jon Blois and it
is addressed to Mr. Chad Wagner. In one of the press cuttings attached to the
Response, Messrs. Blois and Wagner
are named as two of the three partners in the Nettime company. This e-mail contains brief Minutes of a “Nettime
meeting” and refers, among other things, to a change of signatures in one bank
account, the closure of another, the purchase of a telephone and the
preparation of a 5-year plan. The
Panel has concluded that this e-mail is genuine.
Thus, there is some
evidence of sporadic use by Respondent of the name Nettime and the 2005 e-mail
in particular appears to give the lie to Complainant’s charge that the company
is completely moribund.
It is interesting
to note both from the above e-mail and from the “Respondent Information” in the
Complainant and the Response, that Mr.
Wagner’s e-mail address is, as he claims, ‘Chad.Wagner@nettime.com’, but there
must be some doubt as to his claim to use the website as a vehicle for clients
to communicate with him as the copies of the site in 1996, 2003 and currently
which have been provided by Complainant do not display any e-mail address.
There have been
numerous UDRP Decisions finding that the passive holding of a domain name by a
Respondent, coupled with a knowledge of a Complainant’s trademark, is contrary
to the Policy, but that does not seem to be the situation here as Respondent
was not made aware of Complainant’s name until early May 2008 and, as noted
above Mr. Wagner was and still is
using the domain name as his e-mail address.
In 1995 when
Respondent registered his company and domain name, Complainant was not even in
business and indeed, according to the evidence, only began to trade some 10
years later. Therefore to say that
Respondent had no legitimate rights to the disputed domain name in 1995 is
clearly ridiculous.
Non-use of a domain
name does not appear to be contrary to the Policy.
But in any case, as stated above, there does appear to have been some sporadic
use of the name Nettime in the meanwhile.
In conclusion, the
Panel finds no evidence that Respondent has no rights or legitimate interest in
respect of the domain name and so paragraph 4(a)(ii)
is not proved.
Registration
and Use in Bad Faith
Having found that Respondent has rights or legitimate interests
in the disputed domain name pursuant to paragraph 4(a)(ii)
of the Policy, there is no need for the Panel to consider whether it was
registered or used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. For example, in Lockheed Martin Corporation v.
Skunkworx Custom Cycle, D2004-0824
(WIPO January 18, 2005) it was found that the issue of bad faith registration
and use was moot once the panel found the respondent had rights or legitimate
interests in the disputed domain name).
Also, in Vanguard Group Inc.
v. Investors Fast Track, FA 863257 (Nat. Arb.
Forum Jan. 18, 2007) it was held that “Because Respondent has rights and
legitimate interests in the disputed domain name, his
registration is not in bad faith.”
However it is worth noting that bad
faith registration and use are
required for a finding of bad faith so where a
respondent initially registered the disputed domain name in good faith, the
panel should deny the transfer of the disputed domain name to the complainant.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
David H Tatham, Panelist
Dated: December 19, 2008
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