FileWave (USA),
Inc. v. Chris Butler
Claim
Number: FA0301000143682
Complainant is FileWave (USA), Inc., San Francisco, CA (“Complainant”) represented by Jennifer Ng, of FileWave
(USA), Inc.. Respondent is Chris
Butler, Norwich, CT (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <filewave.net>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum (the "Forum") electronically on January 28, 2003;
the Forum received a hard copy of the Complaint on January 31, 2003.
On February 3, 2003, Network Solutions, Inc. confirmed
by e-mail to the Forum that the domain name <filewave.net> is registered with Network Solutions, Inc. and
that 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 10, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 3, 2003 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
postmaster@filewave.net by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification, the Forum transmitted to the parties a Notification of Respondent
Default.
On March 12, 2003, pursuant to Complainant's request
to have the dispute decided by a single-member Panel, the Forum appointed
Sandra Franklin as Panelist.
Having reviewed the communications records, the
Administrative Panel (the "Panel") finds that the Forum has
discharged its responsibility under Paragraph 2(a) of the Rules for Uniform
Domain Name Dispute Resolution Policy (the "Rules") "to employ
reasonably available means calculated to achieve actual notice to
Respondent." Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant requests that the domain name be
transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <filewave.net> domain name is
identical to Complainant’s FILEWAVE mark.
2. Respondent does
not have any rights or legitimate interests in the <filewave.net> domain name.
3. Respondent
registered and used the <filewave.net>
domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
Complainant holds a registered trademark with the United States Patent and
Trademark Office for FILEWAVE (Reg. No. 1,967,669). Complainant has used the mark in relation to its software and
services since 1993 in the United States and Belgium. The Complaint filed by Complainant in this proceeding is
extremely brief and does not put forth any factual allegations regarding
Respondent’s use of the disputed <filewave.net>
domain name. Complainant merely
restates the Policy and adds one sentence asserting that Respondent “should not
use” the domain name because the use would “mislead” Complainant’s customers.
Respondent registered the <filewave.net>
domain name on July 23, 2001.
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."
In view of Respondent's failure to submit a Response, the Panel shall
decide this administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has established that it has rights in the FILEWAVE mark through
registration with the United States Patent and Trademark Office.
Respondent’s <filewave.net>
domain name is identical to Complainant’s FILEWAVE mark because it incorporates
the entirety of Complainant’s mark and merely adds the generic top-level domain
name “.net.” The addition of a generic
top-level domain name does not add any distinguishing characteristics capable
of overcoming a Policy ¶ 4(a)(i) analysis.
See 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); see also
Blue Sky Software Corp. v. Digital Sierra
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rule 3(b)(ix) of the UDRP states that the Complainant must:
Describe, in
accordance with the Policy, the grounds on which the complaint is made
including, in particular,
(1) the
manner in which the domain name is identical or confusingly similar to a
trademark of service mark in which the Complainant has rights; and
(2) why
the Respondent should be considered as having no rights or legitimate interests
in respect of the domain name that is the subject of the complaint; and
(3) why
the domain name should be considered as having been registered and being used
in bad faith.
The Panel finds
that Complainant has failed to establish a prima
facie case in compliance with Rule 3(b)(ix) and Policy ¶¶ 4(a)(ii) or
(iii).
The Panel
concludes that relief shall be DENIED.
Sandra Franklin,
Panelist
Dated: March 24,
2003
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