Scalar Decisions Inc. v. Scalar Consulting Group
Claim Number: FA0902001245562
Complainant is Scalar Decisions Inc. (“Complainant”), represented by Peter M. Dillon, of Siskinds LLP, Ontario, Canada. Respondent is Scalar Consulting Group (“Respondent”), British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scalar.com>, registered with Network Solutions, Inc. (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2009.
On February 2, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <scalar.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 10, 2009 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 5, 2009.
On March 13, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has been conducting its business of designing, deploying and managing information technology systems to its clients across Canada since July 2004. Complainant has a national reputation in the computer technology and consulting field. It is ranked 25th on "Profits Hot 50" companies. Profit Hot 50 is the definitive ranking of Canada's emerging growth companies.
Complainant is the owner of a pending trademark application filed with the Canadian Intellectual Property Office. This application is for the mark “SCALAR,” and this application was filed on October 6, 2008. Complainant is the owner of a second pending trademark application filed with the Canadian Intellectual Property Office. This second application is for the mark “SCALAR & Design," and this application was filed on October 17, 2008.
Complainant registered the domain name <scalar.ca> on August 21, 2004.
The Disputed Domain Name utilizes Complainant's trademark SCALAR.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Respondent does not have trademark or other intellectual property rights to the Disputed Domain Name in Canada or in the United States.
Respondent has no telephone listing in any telephone directory in Canada.
Respondent is not doing business under the Disputed Domain Name.
Respondent has offered the Disputed Domain Name for sale.
The Disputed Domain Name is currently used to host a website that contains no description of Respondent's business, but merely contains links and advertisements to providers of backup software, business cards and business administration, and domain name registrations.
Through this use, Respondent offers a means by which Internet users may access links to businesses that compete with Complainant, while trying to capitalize on consumer confusion.
A visitor to the website to which the Disputed Domain Name directs would be unable to ascertain any bona fide commercial or noncommercial use.
Respondent was incorporated in February 1992, and is an information systems company specializing in customized Internet applications. Respondent has conducted its business since that time.
Respondent registered the Disputed Domain Name on February 20, 1996.
In 2004, Respondent principal consultant took parental leave, and the Disputed Domain Name was "parked.” Said principal consultant currently plans to resume running the business again in the near future.
The word “scalar” is a generic word and has widespread use in a variety of contexts, including engineering and mathematics. Respondent's purpose in selecting this word for its corporate name ("Scalar Consulting Group Inc.") was to reflect the engineering backgrounds of its consultants.
The word “scalar” is part of Respondent's business identity. Respondent has used the word in its website and on its business cards. Over the years since Respondent’s registration of the Disputed Domain Name, the Disputed Domain Name has become associated with Respondent by their local clients.
The word “scalar” is used by a number of third parties as part of their business names. The word is used on the Internet by a number of companies as part of their URLs. The word has been trademarked singly and in combination with other words or as a logo by a number of other companies in the USA, UK and Australia.
Complainant's pending trademark applications were filed in October 2008, which was more than 12.5 years after Respondent registered the Disputed Domain Name.
Respondent has never advertised the Disputed Domain Name for sale. Respondent did engage in a brief e-mail correspondence with Complainant's lawyer on the subject of monetary compensation for the transfer of the Disputed Domain Name. However, at the time of this communication, Complainant's lawyer did not reveal the name of his or her client. The Complainant's lawyer made a proposal for the purchase of the Disputed Domain Name and Respondent replied that it was not interested in the proposal.
When Respondent registered the Disputed Domain Name in February 1996, Complainant did not exist, so the Disputed Domain Name could not possibly have been registered by the Respondent in bad faith.
Respondent has not prevented Complainant from owning a domain name that incorporates Complainant’s pending trademark, as evidenced by Complainant's registration and use of both <scalar.ca> and <scalardecisions.com>.
Complainant came into existence in 2004.
Complainant owns trademark rights in the mark SCALAR for purposes of the Policy.
Respondent registered the Disputed Domain Name in 1996.
Respondent’s name is Scalar Consulting Group Inc.
The Disputed Domain Name is identical or confusingly similar to Complainant's Trademarks.
Respondent has rights and legitimate interests in the Disputed Domain Name.
Respondent has not acted in bad faith.
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.
Pursuant to the policy, a disputed domain name must be identical or confusingly similar to a trademark or service mark in which a complainant has rights. Such rights on the part of a complainant can be established either through registration with a national authority or through use in the market. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Identicality or confusing similarity is determined without regard to minor variations in spelling and without regard to top-level domain identifiers. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
In the present proceeding, Complainant asserts trademark rights as a result of its trademark filings with the Canadian Intellectual Property Office; however, it is a standard principle of trademark law that a trademark registration, in and by itself, confers no rights, and therefore Complaint’s trademark applications do not establish Complainant’s trademark rights pursuant to the Policy.
Complainant also asserts use of the word “scalar” in its domain name (<scalar.ca>) and use of the word as a trademark with respect to its services in the marketplace since 2004. As such, and under the circumstances of this proceeding, the Panel finds that the Complainant has trademark rights in the mark “SCALAR” (“Complainant’s Trademark”).
Respondent's argument that the word “scalar” is used by third parties in a number of ways and in a number of contexts, and therefore may be dilute, is not relevant to the question of trademark rights pursuant to the Policy.
Having traversed this threshold, the Panel has no difficulty finding that the Disputed Domain Name is identical to Complainant's trademark in that the two differ only with respect to the top-level domain identifier, "ca.”
Complainant has established the first element of the Policy.
Pursuant to the Policy, a complainant must first make a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name, and then the burden shifts to the respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Pursuant to Policy paragraph 4(c), a respondent can demonstrate its rights or legitimate interests in a disputed domain name by demonstrating, among other things, (i) use or demonstrable preparations for use of the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services, or (ii) that the Respondent has been commonly known by the Disputed Domain Name, or (iii) making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain or misleadingly diverting customers or to tarnish the trademark or service mark at issue.
In the present proceeding, Complainant asserts that: Respondent does not have a trademark or other intellectual property rights to the Disputed Domain Name; Respondent is holding the Disputed Domain Name for resale; Respondent is not commonly known by the Disputed Domain Name; Respondent has not demonstrated any preparations to use the Disputed Domain Name for a bona fide offering of goods or services.
As such, the Complainant has met its burden under this element of the policy.
For its part, Respondent demonstrates that it is commonly know by the Disputed Domain Name. Respondents name is Scalar Consulting Group, Inc. See AST Sportswear, Inc. v. Hyken, D2001-1324 (WIPO Mar. 26, 2002) (finding that the Respondent was commonly known by the <johnnyblaze.com> domain name because it “submitted conclusive documentary evidence that he used the stage name Johnny Blaze . . . during his career” and the Panel should refrain from examining whether the type of use of the domain name was legitimate and simply determine whether the Respondent was commonly known by the domain name under Policy ¶ 4(c)(ii)); see also Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the Respondent was commonly known by the <avnet.net> domain name because the Respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
As such, Respondent has met its burden under this second element of the Policy.
Complainant has failed to establish this second element of the policy.
An analysis of this element of the Policy in this proceeding is not strictly necessary, as the Panel has found that the Respondent has rights or legitimate interests in the Disputed Domain Name. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding 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)
However, the Panel will note that Policy paragraph 4(a)(iii) requires that a disputed domain name have been both registered and used in bad faith. In the present proceeding, Complainant cannot establish that the Disputed Domain Name was registered in bad faith. This is because Respondent registered the Disputed Domain Name in 1996, whereas Complainant did not come into existence until 2004. As such, the Respondents’ registration of the Disputed Domain Name could not have been wrongful with respect to the Complainant. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the Respondent registered the domain prior to the Complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the Respondent registered the domain name in question before application and commencement of use of the trademark by the Complainant).
Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed, Panelist
Dated: March 27, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum