Jérôme BOSCH v. Linkz Internet Services
Claim Number: FA1201001424481
Complainant is Jérôme BOSCH (“Complainant”), France. Respondent is Linkz Internet Services (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maconfig.com>, registered with IREGISTRY CORP.
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.
David Sorkin and Nathalie Dreyfus as Panelists and David S. Safran as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2012; the National Arbitration Forum received payment on January 13, 2012.
On January 13, 2012, IREGISTRY CORP. confirmed by e-mail to the National Arbitration Forum that the <maconfig.com> domain name is registered with IREGISTRY CORP. and that Respondent is the current registrant of the name. IREGISTRY CORP. has verified that Respondent is bound by the IREGISTRY CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2012 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@maconfig.com. Also on January 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 8, 2012.
An Additional Submission was submitted by Complainant on February 12, 2012.
On February 14, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David Sorkin and Nathalie Dreyfus as Panelists and David S. Safran as Chair.
An Additional Submission was submitted by Respondent on February 17, 2012.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the owner of French trademark registration #073 486 859 granted March 7, 2007 for trademark and the domain name are <ma-config.com> and that Respondent registered the <maconfig.com> domain name which is confusingly similar to Complainant’s trademark and domain name. Complainant further asserts that Complainant has no legitimate right in respect of the domain name, and that domain name <maconfig.com> was obtained by the respondent to intentionally attract, for commercial gain, people wishing to reach Complainant’s website at <ma-config.com>.
B. Respondent
Respondent contends that Complainant’s trademark registration was applied for and issued long after registration and use of the domain name by Respondent, and that there is no competent evidence in the Complaint of a pre-existing trade or service mark right. Respondent also asserts that that the figurative representation of a computer tower as part the Complainant’s registered mark is “integral to the scope of distinctiveness the Complainant may properly claim” in connection with his registration. Furthermore, Respondent contends that that the term “ma config” is a common phrase in the computer field and supplied evidence in support thereof. Still further, Respondent also asserts that there is no indication that identification of the website as <ma-config.com> performed any function other than to indicate the address of the website itself.
C. Additional Submissions
In its additional submission, Complainant makes reference to various activities that are contended to demonstrate that Complainant should be accorded an earlier date for its rights than the date on which the French registration was granted, while the additional submission of Respondent argues that none of the proffered activities are trademark related activities.
The “ma config” term is commonly used by third parties in a descriptive sense. France is not a common law country such that trademark rights are only obtained upon registration. Complainant’s registration was granted subsequent to registration of the <maconfig> domain name by Respondent. There is no evidence that Complainant’s use of <ma-config.com> serves as anything other than as a website address (URL).
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Because of the Panel’s decision with respect to Paragraph 4(a)(iii) of the Policy, no ruling on this factor is considered necessary.
Because of the Panel’s decision with respect to Paragraph 4(a)(iii) of the Policy, no ruling on this factor is considered necessary.
According to the WHOIS information, Respondent registered the <maconfig.com> domain name on September 20, 2005 prior to Complainant developing any rights in the MA-CONFIG.COM mark, Complainant’s rights in the MA-CONFIG.COM mark only dating back to March 7, 2007, which is the date Complainant’s trademark was registered with the NIIP since France does not recognize common law rights and Complainant has not provided sufficient evidence that it actually used the MA-CONFIG.COM as a trademark prior to granting of its trademark registration. Prior panels held that a respondent cannot register a disputed domain name in bad faith if the respondent’s registration predates the complainant’s rights in the mark. 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 Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). If the Panel determines that Complainant’s rights in the mark do not begin earlier than March 7, 2007, the Panel may hold that Respondent did not register the <maconfig.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Additionally, Respondent contends, and evidence supports the fact, that the <maconfig.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s MA-CONFIG.COM mark and is a common descriptive term in the computer field. Moreover, Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, so that the Panel finds that Respondent did not register or use the <maconfig.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <maconfig.com> domain name REMAIN WITH Respondent.
By David Sorkin and Nathalie Dreyfus Panelists, and David S. Safran Chair
Dated: February 17, 2012
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