Altametrics, Inc. v. Ryan Sveinsvoll
Claim Number: FA1008001343628
PARTIES
Complainant is Altametrics, Inc. (“Complainant”), represented by Victor K. Sapphire, of Connolly Bove Lodge & Hutz LLP, California, USA. Respondent is Ryan Sveinsvoll (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <erestaurant.com>, registered with GoDaddy.com, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Debrett G. Lyons, Ralph Yachnin J. and David A. Einhorn as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2010.
On August 27, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <erestaurant.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 September 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@erestaurant.com by e-mail. Also on September 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 28, 2010.
Complainant’s Additional Submission was received on October 3, 2010 in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on October 7, 2010 in compliance with Supplemental Rule 7.
On October 21, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair), Ralph Yachnin J. and David A. Einhorn as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges trademark rights in the term E*RESTAURANT and submits that the disputed domain name is at least confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations and states that it acquired the disputed domain name in order to develop a corresponding website:
… to provide a directory of the best restaurants in major cities across the world. Development took significantly longer than expected due to a variety of unforeseen circumstances; however, the site went live in its current form in September of 2009.
Respondent goes on to explain that:
The domain name was purchased without any knowledge of Complainant and has never been offered for sale by Respondent to any other party.
In 2008, there was a short period in which the domain name was hijacked by a third party who used the alias "Domain Manager". This transfer was conducted without the Respondent's consent. The domain name was then transferred back to Respondent by GoDaddy, the registrar at the time, and was then placed into a Domains by Proxy account to protect from future malicious attacks.
During this time, Respondent did not receive any written correspondence from Complainant, despite his allegations otherwise. Allegations the site was created in response to complaint letters are untrue.
Respondent formed the corporation ERESTAURANT, INC. in July 2003 after acquiring the domain name, and was known by the name in business dealings from then on. The corporation name was updated in 2008 to Intellibrand, Inc. during the final development stage of "erestaurant.com" to allow for the development of a second domain name; however "erestaurant.com" continues to be the focal point of Intellibrand, Inc.
C. Additional Submissions
Both parties made additional submissions which have been fully taken into account by the Panel. Those submissions are referred to as necessary in the Discussion which follows.
FINDINGS
1. Complainant supplies computer software with special application to the restaurant and food service businesses.
2. Complainant has used the trademark E*RESTAURANT since August 2000 in connection with that software.
3. Complainant is the owner of United States Trademark Registration No. 2,853,457, ERESTAURANT SERVICES, filed October 31, 2002 and granted June 15, 2004 for “computer software for use in connection with food service operations, namely, an accounting program accessible via the Internet for restaurant operators that consolidates, computes, and analyzes cash and sales information and labor, workflow and payroll calculations, and tracks inventories and orders of restaurant supplies; and restaurant management services for operators of restaurants, namely, technical assistance to others in the operations of restaurant via the use of computer software accessible via the Internet” and Registration No. 3,057,304, E*RESTAURANT, filed August 6, 2004 and granted February 7, 2006 for “providing online non-downloadable food management, labor management, cash management, accounting and intranet software for use by food service companies”.
4. The disputed domain name was first registered in 1998. After successive ownerships, it was transferred to Respondent on or about October 25, 2008.
5. Respondent has no connection with Complainant and is not authorized to use Complainant's trademark.
6. On September 21, 2009, Complainant sent Respondent a demand letter requiring the transfer of the disputed domain name to Complainant. Reminder letters were sent in November 2009 and January 2010. Respondent did not reply.
DISCUSSION
Preliminary Issue
An issue arises as to whether the Panel should disregard certain supernumery submissions filed by Complainant. The Forum’s Supplemental Rule 7(e) only permits one Additional Submission (7(a)) or response to Additional Submission (7(c)) to be filed by each party.
Respondent petitioned Panel to disregard those submissions however given the level of detail already present in earlier submissions from both sides, Panel takes the view that the additional submissions should be taken into account and it has read and considered those submissions.
Primary Issues
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.
No findings required.[i]
No findings required.[ii]
Policy ¶ 4(a)(iii) requires both registration and use in bad faith. The Panel finds that the key question in this case is whether Respondent registered the domain name in bad faith. Nevertheless, Panel must first pay regard to Policy ¶ 4(b) which lists four scenarios which, to underscore the wording of the Policy, shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Panel does not in this case find compelling evidence that Respondent registered the domain name for any of the reasons set out in subparagraphs (i)-(iv). The Panel therefore turns to examine whether on the evidence it appears more likely than not Respondent registered the domain name in bad faith.
A critical issue is determination of the date of registration of the domain name. In its Additional Submissions, Complainant argues that the date is in March 2009 when the registration was transferred from Domain Manager to Respondent.
It is fatal to Respondent’s claim that Domain Manager was an interloping hijacker whose interruption was remedied resulting in a return to the original owner, that the gaining registrant in that transaction was an individual. Prior to the alleged hijacking, the Disputed Domain Name was registered in the name of Erestaurant Inc., a Delaware corporation, not an individual. Rather than being returned to the original registrant, a corporation, the domain name was re-registered in Respondent’s name as an individual, which must be understood as a transfer to a separate legal entity, and thus a new registration, not a mere “recapture”.
The Panel accepts that submission which accords with principles long developed under the Policy.[iii] Accordingly, the Panel must decide whether in March 2009, Respondent acted in bad faith when it became the transferee of the domain name. Notwithstanding question marks hovering above Respondent’s later use of the domain name, the Panel is, on the evidence, unable to find that Respondent acted in bad faith as early as March 2009.
In reaching that conclusion, the Panel wishes to address three particular arguments raised in submissions. First, Complainant argued that “by the time Respondent registered the domain name in 2009, Complainant’s federal trademark registrations were several years old and he was on constructive notice of Complainant’s rights.” This Panel follows the consensus of opinion of formative panels applying the UDRP that the existence of a United States Federal registration does not give rise to constructive notice of trade mark rights. The relevant bad faith registration date remains March 2009 and not an earlier statutory date.
Secondly, Respondent argues that the <erestaurant.com> domain name is composed of entirely generic/descriptive elements which can not be monopolized by Complainant. The Panel states that whilst the existence of Complainant’s Federal registration is proof of the inaccuracy of that argument, it is nonetheless a relevant factor in the calculation of Respondent’s bona fides at the time of registration that the domain name and the trade mark are terms which traders, generally, might choose without improper motive to use in relation to similar businesses.
Finally, the Panel was not required to make formal determinations in relation to Policy ¶ 4(a)(i). Had it done so, it would have accorded Complainant rights in the trademark E*RESTAURANT by virtue of its trademark registrations.[iv] On the other hand, the Panel would not have found the type of evidence required to support a claim to so-called “common law” trademark rights based on public use and reputation of that trademark.[v] The Panel couples that with Respondent’s argument that the parties occupy discrete business sectors (which has some merit) and finds that there is little, if anything, to create an inference that Respondent set out to target Complainant’s trademark at the time the domain name was registered.
The Panel finds that the domain name was not registered in bad faith and so finds that Complainant has failed to establish the third and final element required of it under the Policy.
Reverse domain name hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. In particular, Respondent contends that every point in Complaint were either incomplete or untrue.
In the case of NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002), it was held that:
To establish reverse domain name hijacking, Respondent must show knowledge on the part of the Complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.[vi]
Complainant argues that:
it is unreasonable to expect Complainant, who originally filed this proceeding against a “Domains by Proxy” undisclosed registrant, to know the myriad individual and corporate identities he maintains. … He [Respondent] implies that Complainant knew or should have known of his registrant status and/or affiliation with the Delaware corporation “Erestaurant Inc.”, although a search of Delaware corporate records for any “erestaurant” entity returns a “No records found” result. He assumes Complainant should have known about his purported change of entity name to “Intellibrand, Inc.” …[Finally], a third-party owner named Domain Manager held the registration for several months before it was transferred to Respondent in his individual capacity, not back to the corporate entity in whose name the domain name was previously registered.
The Panel finds insufficient evidence that Complainant engaged in reverse domain name hijacking.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett G. Lyons
Ralph Yachnin J.
David A. Einhorn
Panelists
Dated: November 11, 2010
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[i] 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)).
[ii] Id.
[iii] The WIPO Overview (see footnote ii above) poses the following question:
3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether domain name was registered in bad faith?
Consensus view: While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.
See generally, Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406; BWR Resources Ltd v Waitomo Adventures Ltd, WIPO Case No D2000-0861; Motorola Inc v NewGate Internet, Inc., WIPO Case No D2000-0079.
[iv] The Policy does not distinguish between registered and unregistered trademark rights (see McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)), however a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003).
[v] The UDRP is also administered by the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO has also published an “Overview of WIPO Panel Views on Selected UDRP Questions.” That Overview poses the following Q&A of relevance to the discussion here:
1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
As a rule, decisions of the NAF have followed the same path. See, for example, Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) where it was said that:
Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions..
[vi] see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”.