COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

 

DC Micro Development, Inc. a/k/a TopDog Software, Inc. v. Sophtware.com, Inc.

Claim Number: FA0212000137042

 

PARTIES

The Complainant is DC Micro Development, Inc. a/k/a TopDog Software, Inc., Lexington, KY (“Complainant”).  The Respondent is Sophtware.com, Inc., Dacula, GA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <topdogsoftware.biz> and <topdogpro.biz>, registered with Network Solutions, Inc.

 

PANEL

The undersigned 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.

 

Hon. Charles A. Kuechenmeister (Ret.) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum” electronically on December 12, 2002: the Forum received a hard copy of the Complaint on December 13, 2002.

 

On December 26, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <topdogsoftware.biz> and <topdogpro.biz> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  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 the Restrictions Dispute Resolution Policy (the “RDRP Policy”) and the Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 20, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on January 20, 2003.

 

Timely additional submissions were received from Complainant on January 22, 2003 and January 26, 2003.

 

On February 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.      Complainant

Complainant is the registrant of U.S. Trademark Registration No. 2,561,998 (dated April 19, 2001) for the TOPDOG SOFTWARE mark for computer software, in class 9, on the Principal Register of the US Patent and Trademark Office (herein "USPTO").  Complainant has used the TOPDOG SOFTWARE mark on or in connection with computer software since September 1994 and currently uses the mark.

 

Complainant is also the holder of the Texas-registered Trademark TOPDOG and design, Registration No. 59885 dated October 26, 2000.

 

Complainant has used, since 1994, the marks TOPDOG and TOPDOG SOFTWARE in interstate commerce in connection or in association with computer software, computer video games, internet software, search engine analyzer software, and custom software and technical consulting services.  Such use by Complainant is both related to and within the natural expansion of its use of its TOPDOG and TOPDOG SOFTWARE marks.  Since 1998, Complainant has sold an internet search engine analyzer computer program named “TopDog Search Engine Analyzer/Submitter” (commonly known as “TopDog”) on its www.topdog.com web site and through catalogs and retailers.

 

In the trade and relevant consuming public for the Complainant’s software products, especially with regard to internet search engines and search engine analyzer computer software, the Complainant has been and is currently also commonly known as “TOPDOG” and “TOPDOG SOFTWARE”.  "TOPDOG" is a strong, highly distinctive and well-known, if not internationally famous, mark associated with Complainant's software offerings.

 

Respondent's <topdogsoftware.biz> and the <topdogpro.biz> domain names are identical to and confusingly similar to Complainant’s US TRADEMARK No. 2,561,998 and Texas Trademark No. 59885 for the TOPDOG and TOPDOG SOFTWARE marks for computer software and search engine analyzer software.

 

Respondent does not have any right or legitimate interests in the <topdogsoftware.biz> or <topdogpro.biz> domain names. Respondent is not commonly known by any name reflected by the <topdogsoftware.biz> domain name or as TopDog.  The Respondent is known as Sophtware, Inc., or Michael Lange.  Respondent is not a trademark holder for the federal trademark TOPDOG SOFTWARE or the Texas trademark TopDog.  Complainant has never authorized Respondent to utilize its registered TOPDOG or TOPDOG SOFTWARE marks, nor does Complainant have any relationship or association whatsoever with the Respondent.

 

During March, 2002 and, on information and belief, since a date no earlier than March, 2002, Respondent registered and has used the <topdogsoftware.com> and <topdogpro.com> domain names to market a computer program known as “Topdog Pro” which visually resembles Complainant’s “TopDog” software product and which competes with it.

 

Respondent registered and is using the <topdogsoftware.biz> and <topdogpro.biz> domain names in bad faith, and not for any bona fide business or commercial purpose.  By using them to market computer software known as “Topdog Pro” to the public and interstate commerce, Respondent has intentionally attempted to attract, for commercial gain, internet users to the Respondents web site, by creating a likelihood of confusion with the Complainant’s TOPDOG and TOPDOG SOFTWARE marks as to the source, sponsorship, affiliation, or endorsement of the Respondents web site or location or of a product or service on the Respondent’s web site and location.  On both of the named domain names, and the associated web site, the Respondent is using Complainant’s TOPDOG SOFTWARE and TOPDOG trademarks to the detriment of consumers and Complainant by selling software titled “TopDog Pro” directly to consumers who have been intentionally diverted, for commercial gain, to the Respondent’s named domains.  Respondent has been using the domain names in bad faith by confusing consumers into thinking that Respondent has license to use the marks or that the software being sold on its web site is an upgraded version of Complaint’s well-known TOPDOG software and, in fact, Respondent’s software is visually and functionally similar to Complainant’s software, causing further confusion.

 

B.      Respondent

The two domain names in dispute, though registered to Sophtware.com, Inc., of which Michael Lange is President, are actually controlled by and administered by Michael D. Lange individually.  The domain names were purchased by Michael Lange individually, but mistakenly established to the wrong account with Network Solutions, Inc.

 

Two separately commenced and pending civil actions exist in connection with and relating to the <topdogsoftware.biz> and <topdogpro.biz> domain names that are subject to this Complaint.  Accordingly, the Panel should terminate this proceeding.

 

Neither Complainant has ownership rights in the asserted trademarks that are enforceable against Respondent.  The trademark rights are owned, not by either of Complainants, but by (1) a partnership established in December 1998 consisting of David Cecil and the Respondent Michael Lange (which contemplated Mr. Lange's marketing of the software in connection with trademark rights which accrued from sales of the software), or alternatively by (2) Top Dog Software, an Oregon sole proprietorship established in 1999 and owned by Mr. Lange, whose use of the name pre-dated the claims of ownership asserted by Complainants, or alternatively by (3) TopDog Software, Inc. a Georgia corporation established by January 2001, (herein "TopDog Georgia") of which the undersigned (and, notably, neither of Complainants) is an owner. 

 

The Respondent Lange has an ownership interest in each of these entities, which confers upon him a right and legitimate interest in respect of the disputed domain names.

 

The federal and Texas state trademark registrations upon which Complainants rely were originally applied for by TopDog Georgia but a principal in that corporation, David Cecil, unbeknown to Mr. Lange and apparently without the consent of a Georgia state court receiver for TopDog Georgia, requested the USPTO to change the registered owner of that mark to TopDog Software, Inc. a Texas corporation (herein "TopDog Texas."

 

Prior to the October 2000 purported assignment of TopDog Texas to Complainant, TopDog Georgia had acquired all of the TopDog Texas assets.

 

TopDog Georgia owns the trademark rights upon which Complainants' USPTO Registration was based, and its business activities are now subject to an order of a Georgia state court.  That order by its terms permits the Respondent to sell TopDog software.  The domain names registered to Respondent are a legitimate means to this end.

 

Further, pursuant to the order of the Georgia court, the undersigned Michael Lange has the right to use the mark TOPDOG in connection with marketing software, and he has used the domain names, prior to notice of the dispute, in connection with the bona fide offering of goods or services.

 

C.                  Additional Submissions

Complainant and Respondent timely filed additional submissions and the Panel considered both of them.  The most significant new evidence from both submittals was an order of the U.S. District Court for the Western District of Kentucky transferring to the U.S. District Court for the Northern District of Georgia one of the two pieces of civil litigation currently pending between the parties, a case filed by Complainant in Kentucky.

 

FINDINGS AND DISCUSSION

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.

 

Paragraph 4(b) of the RDRP Policy defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

 

(1)   to exchange goods, services, or property of any kind; or

(2)   in the ordinary course of trade or business; or

(3)   to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

 

Identical or Confusingly Similar  Policy ¶ 4(a)(i).

Exhibit 1 to the Complaint is a USPTO certificate showing the registration, as of April 16, 2002, of TOPDOG SOFTWARE, with a "TD" logo immediately above the words to "TOPDOG SOFTWARE, INC (TEXAS CORPORATION)" having its address in Lawrenceville, Georgia.  Exhibit 2 to the Complaint is a single-page certificate issued by the Texas Secretary of State on October 26, 2000 showing the registration of TOPDOG TD AND DESIGN as Registration No. 59885.  It does not identify the registrant, and the attached application to which it refers is not attached.

 

Exhibit 5 to the Complaint is a single-page contract dated October 2, 2000 for the sale of Top Dog Software and Top Dog Software, Inc. (Texas) from Top Dog Software, Inc. (Texas) to DC Micro Development, Inc. of Kentucky.  The signature of DC Micro Development, Inc. of Kentucky is executed by David Cecil, as President.  This is the only evidence linking either Complainant to the USPTO and Texas registrations.

 

Respondent’s <topdogsoftware.biz> and <topdogpro.biz> domain names are confusingly similar to the TOPDOG SOFTWARE and TOPDOG TD AND DESIGN trademarks claimed by Complainant.  The dominant part of Respondent’s domain name reflects the TOPDOG SOFTWARE and TOPDOG TD AND DESIGN marks, and the addition of a top-level domain name such as “.biz” is irrelevant when determining whether a domain name is identical to Complainant’s mark.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

 

Based upon the foregoing, the Panel finds and determines that <topdogsoftware.biz> and <topdogpro.biz> are identical or confusingly similar to the marks TOPDOG SOFTWARE and TOPDOG TD AND DESIGN, in which Complainant has rights.

 

Rights and Legitimate Interests   Policy ¶ 4(a)(ii).

Complainant presented a prima facie case that it has rights to the TOPDOG SOFTWARE and TOPDOG TD AND DESIGN marks.  Respondent, however, has also presented a significant body of evidence that Mr. Lange also has rights and legitimate interest in respect of the disputed domain names as well.  The Panel takes note of an order of the U.S. District Court for the Western District of Kentucky transferring to the U.S. District Court for the Northern District of Georgia, one of the civil actions pending between the parties.  See D.C. Micro Development, Inc. v. Lange, Civil Action No. 3:02-CV-225(H).  This order illustrates the scope and complexity of the factual disputes between them.  Those disputes will require extended evidentiary hearings and coordination between state and federal trial courts in Georgia.  Those proceedings will ultimately determine the extent of Respondents' rights and legitimate interests in respect of the disputed domain names involved in this administrative proceeding.

 

The Policy and the Rules for Uniform Domain Name Dispute Resolution Policy are not intended to cover domain name disputes in which both parties have some legitimate legal claim to the domain.  The ICANN dispute resolution procedure was consciously chosen to be "minimalist" in coverage.  ICANN intentionally chose to relegate domain name disputes between "legitimate" claimants to the courts and other dispute resolution proceedings.  4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §25:74.2, at 25-194 & n.5 (20th rel. 2001) ("The adopted policy establishes a streamlined, inexpensive administration dispute resolution procedure intended only for the relatively narrow class of cases of 'abusive registrations.')

 

Any right or legitimate interest of Respondent in the disputed domain names is inextricably entwined in the larger disputes between the Parties currently pending in Georgia.  This UDRP proceeding is neither designed nor equipped to resolve those issues, and without the ability to do so it cannot resolve the matter of Respondent's right or legitimate interest in that domain.

 

The evidence before the Panel is insufficient to permit it to determine the relative rights and legitimate interests of the parties in <topdogsoftware.biz> and <topdogpro.biz>.  Accordingly, the Panel finds and determines that Complainant has failed to prove that Respondent has no right or legitimate interest in respect of the disputed domain name.

 

Bona Fide Business or Commercial Use  RDRP Policy ¶ 4.

Resolution of the bona fide business or commercial purpose element of Complainant's case involves essentially the same evidentiary and factual issues as the legitimate interest element, and depends entirely upon resolution of the larger disputes between the parties.  It also is beyond the scope of this proceeding.

 

Based upon the foregoing, the Panel finds and determines that Complainant has failed to prove that Respondent does not currently use <topdogsoftware.biz> and <topdogpro.biz> for a bona fide business or commercial purpose.

 

Registration And Use In Bad Faith  Policy ¶ 4(a)(iii).

Resolution of the bad faith registration and use element of Complainant's case involves essentially the same evidentiary and factual issues as the legitimate interest element, and depends entirely upon resolution of the larger disputes between the parties.  It also is beyond the scope of this proceeding.

 

Based upon the foregoing, the Panel finds and determines that Complainant has failed to prove that Respondent has registered and is using <topdogsoftware.biz> and <topdogpro.biz> in bad faith.

 

DECISION

Based upon the foregoing Findings and Discussion, the relief sought in the Complaint is denied.

 

 

Honorable Charles A. Kuechenmeister (Ret.)

Dated:  February 10, 2003

 

 

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