Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin
Claim Number: FA0911001296166
Complainant is Starmail Distributors Inc. (“Complainant”), represented by Brian Komenda, Canada. Respondent is Xedoc Holding SA a/k/a domain admin (“Respondent”), represented by Paul R. Keating, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <starmail.com>, registered with Fabulous.com Pty Ltd.
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.
G. Gervaise Davis III and Terry F. Peppard as Panelists and Bruce E. O’Connor as Chair.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2009. The Complaint requested that a single-member Panel hear the dispute.
On November 25, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <starmail.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On December 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 4, 2010 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 January 4, 2010. The Response requested that a three-member Panel hear the dispute.
On January 13, 2010, the National Arbitration Forum appointed G. Gervaise Davis III and Terry F. Peppard as Panelists and Bruce E. O’Connor as chair.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
Complainant is the owner of the trademark STARMAIL (the “Trademark”) that is the subject of the following registrations:
· Canadian Registration No. TMA542243, issued on March 13, 2001 on an application filed on April 27, 1999
· United States Registration No. 3,055,771, issued on January 31, 2006 on an application filed on September 9, 1999
Both registrations protect the Trademark for “distribution of flyers.” Complainant claims common law usage of the Trademark since 1984.
Complainant uses the Trademark to provide local and national clients with distribution of printed paper-based flyers, electronic flyers, product samples, catalogues, addressed mail, and electronic marketing services. An increasingly important aspect of Complainant’s marketing package is the provision of redirection services to clients’ public websites via Complainant’s own site(s) using various domain names.
Links to clients’ websites are supplemental to Complainant’s integrated promotional services for which clients pay substantial fees. Complainant does not collect ‘click-through’ fees, nor does it post links to websites that are not formally contracted clients.
Complainant has developed a reputation within the Canadian advertising industry and amongst major retailers as one of the most advanced provider of marketing delivery solutions in the country. As such, Complainant not only provides services to clients but also is frequently consulted by advertising agencies, newspaper chains, and other parties on how best to reach the public in light of changes occurring within the industry especially as relates to the impact of the Internet and the decline of traditional media.
Complainant’s web-based redirection service enabling the public to easily locate the websites and locally relevant online flyers for Canada’s major retailers and service providers has proven especially popular with clients and the public. At the request of some national clients and their advertising agencies, Complainant is currently embarked on a project to make its web-based services available to other distributors across Canada and the United States as an ‘all-in-one’ custom-branded, ‘software-as-service’ package. To capitalize on Complainant’s hard-earned reputation Complainant plans to label the sites ‘Powered by Starmail.’ This service would provide smaller distributors with an integrated web presence that they could not otherwise afford, provide online access to Complainant’s advanced material processing, routing, and geo-coding capabilities, provide clients with consistent online market analysis and distribution planning tools, and provide the public with a consolidated location to browse retailers’ goods and services on the internet specific to their local market.
Respondent has been using the disputed domain name since 2006, incorporating a name identical to the Trademark except for addition of the top domain suffix “.com,” to redirect Internet users from a parked website to other commercial websites for the purpose of promoting third-party products and services. Respondent has not been authorized to use the Trademark.
Respondent does not have any legitimate rights or interests in the disputed domain name because:
· A search of worldwide trademark registrars does not indicate that the Respondent has registered STARMAIL in any jurisdiction
· The Respondent does not use its website to directly offer bona fide goods or services to the public but rather, merely contains links to other, third-party websites offering goods and/or services
· The Respondent is a holding company located in Luxembourg whose business model is the acquisition of valuable domain names for use in what itself terms “Direct Navigation and affiliation programs” (reference WIPO Case No. D2008-0454, July 4, 2008)
· The STARMAIL.COM website operated by the Respondent does not provide a business address or any contact details whatsoever
· The Respondent’s website is a simple one-page site that is, on a minor scale, similar to the redirection functionality of Complainant’s own linkage service. The Respondent appears to be operating its website for commercial gain by capturing internet users searching for Complainant’s web presence and harvesting ‘click-through’ advertising fees by redirecting captured users to third-party commercial websites.
Respondent has acted in bad faith by using the disputed domain name because:
Complainant’s trademark applications in both
§ At the time of Complainant’s trademark filing and its first moves beyond distribution of physical marketing materials into web-based promotion, Complainant attempted to acquire rights to the disputed domain name but discovered it was already registered to an email service company (not the Respondent). Legal counsel advised that the domain holder at that time was operating a bona fide business unrelated to Complainant’s own and that Complainant would therefore be unsuccessful pursuing an ICANN dispute resolution
§ Deprived of the use of the Trademark as a domain name Complainant subsequently registered a variety of domain names that proved less than satisfactory. In 2005 Complainant registered domain names including variations of the Trademark. Through considerable investment of capital and effort Complainant managed to successfully build its Internet presence using those domain names
§ By 2006 the original registrant gave up or lost the disputed domain name, which was then acquired by the Respondent. The Respondent immediately set up a landing page with simple links to a variety of commercial web pages presumably for the purpose of financial gain through harvesting click-through fees. A number of the links were (and still are) to businesses in Canada, Complainant’s own primary market
§ Upon becoming aware in 2006 that the Respondent was operating a website that violated Complainant’s trademark rights, and several times since, Complainant emailed the Respondent requesting transfer of the STARMAIL.COM domain to Complainant for which Complainant would reimburse reasonable expenses. The Respondent has failed to reply to any of Complainant’s messages including the latest one sent on 11 July 2009
§ As of the date of the Complaint, the Respondent continues to maintain a website using the disputed domain name as a landing page redirecting visitors to third-party sites including those who operate in Canada
· Both Complainant’s clients and the general public who utilize Complainant’s redirection service to quickly find and link to local retailers’ electronic flyers have indicated confusion between Complainant’s web site and the one operated by the Respondent. Complainant contends that the Respondent is commercially benefiting through this confusion by capturing Internet users looking for Complainant’s website(s) and collecting click-through fees. By using the Trademark embedded in the disputed domain name, the Respondent is realizing gain from the hard-earned reputation of Complainant and impeding its ability to conduct business.
Respondent registered the disputed domain name in early 2006 after it was voluntarily abandoned by the prior registrant. Respondent has used the disputed domain name as a generic search portal to provide email and VOIP related advertising and other content contextually relating to the domain name (its “PPC” usage). There have never been any links or other reference to the Complainant, its competitors, or the goods and services provided under the Trademark.
Until receipt of the Complaint, Respondent was completely unaware of Complainant, its business, or its asserted rights. Respondent is not a distributor of flyers and has never engaged in any such business in Canada or the U.S. The Complainant has not proven that it enjoys any kind of reputation outside Canada and the U.S. There are no European trademarks for the Trademark. Respondent is located in Europe and there is no reason that Respondent should have heard of, and even less so targeted, the Complainant.
Regarding the first element of the Policy, Complainant’s rights in the Trademark are extremely limited. The services for which the Trademark has been registered are limited to the distribution of flyers embodied in a physical medium and do not cover websites or the Internet. Complainant may not claim broad based protection for its services based on its registrations.
Also, Complainant has not proven its common law rights in the Trademark. It is not clear as to what services this claim is made. Complainant’s contentions as to common law rights, made only through its counsel’s allegations, are not proof of such.
While Complainant may have established sufficient rights to meet the watered-down threshold requirement under the first Policy element, Complainant has not provided any evidence of reputation or consumer recognition, in Canada or elsewhere.
Regarding the second element of the Policy, Respondent is using the disputed domain name in connection with a bona fide offering of goods and services, there is no requirement that Respondent hold trademark rights in that domain name, and Respondent does not require authorization or license from Complainant.
As to bona fide offering, there is no evidence that would establish that Complainant had been at all known by the Trademark at any time prior to 2006. None of the evidence shows Complainant was (or is) widely known by the Trademark as of the date of the Complaint.
The disputed domain name has existed since 1996 and had been used by the prior registrant for Internet communication delivery services. Complainant could never claim exclusive use of the Trademark prior to cessation of use of the domain name by the prior registrant in early 2006. Respondent’s PPC usage is consistent with the abandoned use by the prior registrant, and Respondent in no way was targeting the Complainant.
PPC usage is not illegitimate per se, as long as the disputed domain name was not registered because of its value as a trademark. Especially is this so where the disputed domain name, as here, consists of terms that can be seen as descriptive. Complainant cannot contend that its Trademark is an “invented word” or inherently unique. The Trademark is not famous and Complainant trademark rights are limited to the “distribution of flyers.”
Complainant makes no allegation that Respondent uses the disputed domain name to link to Complainant or its competitors, or to otherwise provide goods and services limited to the distribution of flyers. Complainant merely claims that a number of the links that it saw when its accessed Respondent’s website redirected to businesses in Canada. But, Respondent cannot be held responsible for determining all of the links on its website because those are generated by Google which attempts to portray what the “local” viewer is interested in.
Respondent is not required to show that it has a “superior” right or legitimate interest in the disputed domain name, but only “a” right or legitimate interest in that domain name. Because the disputed domain name is a reasonably descriptive term, it has an apparent meaning apart from any trademark rights asserted by Complainant.
As to Respondent’s lack of trademark rights, such a contention is irrelevant (although having trademark rights is a defense to a claim under the UDRP).
As to Respondent’s lack of authorization or license, the disputed domain name consists of generic terms. As the first to register that domain name, Respondent holds a “right or legitimate interest” therein.
Regarding the third element of the Policy, Respondent registered and uses the disputed domain name in good faith.
Without actual knowledge of Complainant, there can be no bad faith intent. Constructive notice cannot form a basis for finding registration and/or use in bad faith. Even if it is possible that Respondent was aware of Complainant at the time of registration, the Complainant needs to discharge its burden that the Respondent has acted in bad faith. When the Trademark consists of generic/descriptive terms, a finding of bad faith requires evidence that Respondent registered the disputed domain name with the Trademark in mind, to profit from the trademark value associated therewith, and not because of its value as a generic/descriptive domain.
Complainant has not shown that it should be well-known or enjoy any kind of online or offline reputation. No evidence in the form of consumer surveys, unsolicited media coverage, or other third party recognition has been submitted.
Complainant’s contentions as to its planned web services are clearly irrelevant to the current and past status of the Trademark and its reputation.
Given that Respondent is located in Luxembourg, no evidence suggests that Respondent knew of should have been aware of Complainant or its Trademark (limited to specific services and to protection only in Canada and the US) when Respondent registered the disputed domain name in early 2006. The Canadian and US registrations are not sufficient to show knowledge, and Respondent had no reason or obligation to conduct a trademark search in those countries before registering the disputed domain name. Even if Respondent had conducted such a trademark search, the results would have located a trademark for “distribution of flyers.” Mere knowledge of the Trademark is not sufficient on its own to establish bad faith registration.
There is no evidence of any attempt by Respondent to sell the disputed domain name.
Respondent has not deprived anyone of the disputed domain name. That domain name was first registered by a third party in 1996 and used for bona fide purposes since then. Respondent’s current usage is consistent with the usage by the prior registrant. Finally. Complainant has introduced no evidence that Respondent is engaged in a pattern of bad faith conduct.
Respondent did not register the disputed domain name for the purpose of disrupting the business of Complainant, but registered that domain name to be used as a general search portal. The content on Respondent’s website reflects that intended use, and includes no links or other references to anything even remotely associated with Complainant and the services offered under the Trademark.
The disputed domain name is not used to cause confusion and it was not registered with the intent to cause confusion. The Trademark is not so inherently distinctive or famous that registration and use by anyone but Complainant would be impossible. Complainant has admitted that the use of the disputed domain name by its prior registrant, i.e., in conjunction with an e-mail service, was legitimate. Further, a domain name search reveals that 581 domain names have been registered including the term “starmail.” A Google search for “starmail” excluding all reference to Complainant results in close to 75,000 hits and includes reference to several e-mail services, computer programs, and third party advertising services. This widespread third party use contradicts any contention that Respondent specifically targeted the Complainant.
Although Complainant claims instances of actual confusion among consumers, it provides no evidence thereof.
Complainant claims to have sent several cease and desist letters in 2006. Respondent has no record of receiving these alleged letters. Complainant has provided no copies of any demand letters and has given no explanation for why no follow-up was undertaken for over 3 ½ years. Respondent had no obligation to reply to any such letters and Complainant’s deliberate delay is clear and convincing evidence that Complainant itself does not believe in its position.
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum for the Panel to give weight to the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum for the Panel to give weight to the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents. Respondent has provided the required ¶ 5(b)(viii) certification and additional documents. The Panel finds that the factual contentions made by both parties are admissible and will be given weight as appropriate.
The Panel finds that Complainant has rights in the Trademark and that the disputed domain name is confusingly similar to the Trademark. The Panel also finds that the Respondent has rights and legitimate interests in respect of the Domain Name, and makes no findings with regard to the bad faith of the Respondent in registering and using the Domain Name.
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.
Complainant has demonstrated rights in the Trademark, by reason of
proof of the existence and ownership of its Canadian Registration No. TMA542243
The Panel finds that the disputed domain name is confusingly similar to the Trademark. The addition of a generic top-level (“gTLD”) is irrelevant in distinguishing a disputed domain from a registered mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Prior decisions make it clear that a panel need only consider the Trademark and the disputed domain name in evaluating confusing similarity under the Policy, and need not consider the respective goods and services offered under the Trademark and the disputed domain name. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, D2000-1968 (WIPO Jan. 25, 2001)( “The Respondent does not deny that the disputed domain name is confusingly similar to the GUINNESS trademark. Rather he says there is no trademark infringement because his site does not sell similar wares in the same geographical sphere as the Complainant. But there is an important distinction between the domain name on the one hand and the Website on the other. The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”).
Respondent does not dispute this finding.
Complainant has carried its burden of proof under ¶ 4(a)(i) of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to 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.”).
Policy ¶ 4(c) lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant contends that the disputed domain name resolves to a website that displays hyperlinks to third-party websites. Complainant makes no assertion as to whether those third-party websites compete with Complainant. Complainant further asserts that Respondent receives click-through fees for these hyperlinks. The Panel finds that Complainant has made a prima facie case that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds, however, that Respondent has overcome that prima facie case by establishing the circumstances of ¶ 4(c)(i) of the Policy.
The record does not show that Respondent received any actual notice of the dispute prior to filing of the Complaint[i], a time that is subsequent to the established first use of the disputed domain name by Respondent[ii].
The question for the Panel to decide, then, is whether Respondent’s prior use was bona fide. See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”). Something more than the operation of a landing or PPC page is required to show lack of bona fide use: did Respondent know or should Respondent have known of Complainant or its Trademark prior to use of the disputed domain name?
Regarding Complainant’s trademark registrations, only
Nor was Respondent obligated to conduct a trademark
search prior to its first use of the disputed domain name. See FormLinc Information v. Credit Suisse Grp., FA 96750 (Nat. Arb.
Forum Apr. 18, 2001) (“[I]t is clear from the travaux preparatoires of
the Policy that mere failure to conduct a trademark search does not constitute
bad faith.”); see also Essex Grp., Inc.
v. Song, FA 114664 (Nat. Arb. Forum Jan. 20, 2002) (finding due to the geographical
nature of the domain name that no registrant should have had to conduct a
trademark search before registering.); see
also Am. Med. Response, Inc. v. Advanced Mktg. Res., FA 117380 (Nat. Arb.
Forum Sept. 24, 2002) (finding “Respondent cannot be found to have registered
the domain name in bad faith on the sole ground that it did not execute a trade
name search for the application for a service mark filed by Complainant.”). Even if Respondent searched today in
Nor was Respondent obligated to register its domain name as a trademark in any jurisdiction. Complainant has cited no authority for this proposition.
It is the failure of Complainant’s proofs of any expanded rights in its Trademark, beyond those set forth in its limited North American trademark registrations, and of any expanded reputation beyond the field of its North American use, that is most persuasive to the Panel. See Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
First, the services in those registrations are limited to “distribution of flyers.” Complainant does not establish that a natural range of expansion of services would encompass landing or PPC pages.[iii]
Second, there is no contention by Complainant that it has even sought registration for its trademark in any countries other than those in North America.
Third, no evidence has been provided that corroborates or supports the contentions of widespread and expanded use in the Complaint. Rather, the record shows that the term “starmail” is widely used as part of domain names and of trade names owned by numerous third parties.
In conclusion, the Panel finds that Respondent has made and is making a legitimate, bona fide use of the Domain Name. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Thus, Complainant has failed to carry its burden of proof under ¶ 4(a)(ii) of the Policy.
The Panel declines to analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Nonetheless, the Panel notes that many of its factual determinations considered with regard to legitimate rights and interest would lead the Panel to the conclusion that Complainant failed to meet its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
Bruce E. O’Connor, Panelist
Dated: January 27, 2010
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[i] Although Complainant contends that it sent cease and desist letters by e-mail to Respondent as early as 2006 and includes an example of such a letter dated 11 July 2009, Respondent denies receipt of any such letters.
[ii] Complainant and Respondent both state that this first use occurred in 2006.
[iii] Complainant has merely introduced the definition of trademark International Class 35, which is the catchall category for advertising and business services. That definition does not prove that PPC pages are a natural expansion of the service of providing “distribution of flyers.”