Objectiva Software Solutions, Inc. v.
Canal Internet
Claim Number: FA0302000144594
PARTIES
Complainant
is Objectiva Software Solutions, Inc.,
Carlsbad, CA USA (“Complainant”) represented by John A. Mizhir Jr. of Fish
& Richardson P.C. Respondent is Canal Internet, Paris, FRANCE
(“Respondent”) represented by Boukhaili
Hamdaoui, of Canal Internet.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <objectiva.com>
and < objectiva.net>,
registered with Tucows, Inc.
PANEL
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.
Judge
Marilyn W. Carney as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 3, 2003; the Forum received a hard copy of the
Complaint on February 6, 2003.
On
February 4, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <objectiva.com> and < objectiva.net> are registered
with Tucows, Inc. and that the Respondent is the current registrant of the
names. Tucows, Inc. has verified that
Respondent is bound by the Tucows, 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 7, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 27, 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@objectiva.com and
postmaster@objectiva.net by e-mail.
A
timely Response was received and determined to be complete on February 26, 2003.
Subsequently,
on March 3, 2003, the Forum received an additional timely submission from
Complainant. Thereafter, Respondent
forwarded a response to this additional submission from Complainant; it was,
however, ruled that this last submission had not been received by the deadline
and consequently was not considered.
On March 5, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Marilyn W.
Carney as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
Objectiva Software Solutions, Inc., a Delaware Corporation, states that it
first used the Objectiva name in
commerce on August 8, 2001, and that its business is to develop tailor-made
software products to enable its clients to accelerate their time to market and
improve the quality of their products and software. On December 24, 2002, it also obtained a U.S. Trademark
Registration for a similar use.
Complaint
further notes that it owns the domain name <objectivasoftware.com>, which
resolves to the company’s website. It
argues that the disputed domain names, both <objectiva.com> and <objective.net>
are confusingly similar to its corporate and trademark registrations, that
Respondent has no rights to the disputed domain names, and that Respondent
registered the disputed domain names in bad faith.
It
argues that Respondent has no rights to the domain names because Respondent is
not currently using them, and its principal argument of “bad faith” is that
Respondent offered to sell Complainant
the names for more than Respondent’s out of pocket expense.
B. Respondent
Respondent,
Canal Internet, is a business located in Paris, France. Respondent shows that it registered the
disputed domain names on January 18, 2001 and February 1, 2001 with GANDI and
that they were later transferred to TUCOWS as TUCOWS offered a redirection
service, which GANDI did not. It notes
that it is an authorized TUCOWS reseller for the registration and management of
top level domain names – including .com and .net.
In
response to the allegation that the disputed domain names and that of the
Complainant are confusingly similar, the Respondent does not disagree. It notes, however, that OBJECTIVA is a
common generic Portuguese/Spanish term which means OBJECTIVE in English, and it may be used with any
kind of business. Respondent further
notes that Canal Internet registered the domain names <objectiva.com> and <objectiva.net> nearly two years
before Complainant’s mark was registered (and several months before Complainant
used the names in commerce).
Canal
Internet alleges that it has been in the business of Internet & Computing
Engineering since June 1999 and registered the disputed domain names along with
other domain names for the purpose of developing new Internet and computing
services targeted towards small and medium sized companies in France, but that
the world economic slowdown interrupted and/or delayed some of its plans.
Respondent
also specifically notes that only after Complainant made an offer to purchase
the disputed domain names, were there any offers to sell. Complainant offered to buy, and only then
did Respondent make counter offers.
C.
Additional Submissions
Additional
submissions were made by Complainant, but it did not offer anything new.
FINDINGS
1. The disputed domain names are <objectiva.com> and <objectiva.net>.
2. Respondent registered both of these names
in January 2001.
3. Respondent is in the business of
registering domain names for the purpose of developing new Internet and
computing services targeted toward small and medium sized companies in France.
4. Objectiva is a common generic
Portuguese/Spanish term which means objective in English.
5. Complainant first used the Objectiva name
in July 2001, and in commerce in August 2001.
6. Complainant filed the name Objectiva with
the U. S. Patent and Trademark office December 24, 2002.
7. On July 18, 2001 Complainant offered
Respondent $500 for the disputed domain names; further negotiations followed.
8. Respondent effected a transfer of the
disputed domain names from GANDI to TUCOWS; the transfer took place from
December 4, 2002 to February 7, 2003 during which time Complainant registered
its mark.
9. Complainant maintains that the names are
confusingly similar, that Respondent has no rights or legitimate interests in
the names and that they were registered in bad faith.
10. Respondent does not disagree that the
names may be confusingly similar, but denies the other allegations.
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.
There doesn’t seem to be any real issue
that the names are identical and/or confusingly similar. That having been said,
there is much that is unsaid. Objectiva
in a language other than English seems to be a generic word meaning objective. Also left unsaid by the Complainant is the fact that it was
surely aware of the disputed names when it filed for its mark with the U. S.
Patent and Trademark office: it had, after all, tried to buy the domains a year
and a half before.
Complainant bears the burden of proof on
this issue. Respondent claims that it
registered its <objectiva.com> and <objectiva.net>
domain names with the intent to develop Internet and computing services
targeting small and medium sized companies in France, but due to economic
concerns, Respondent delayed development of this project. During the delay from
January 2001 to December 4, 2002, however, Respondent used the domain names to
redirect Internet traffic to its main website <canalinternet,fr>. On December 4, 2002, Respondent agreed to
transfer the domain names to a different registrar that did not have the same
redirection services as Respondent’s previous registrar. While Respondent implemented its own
redirection service from December 4, 2002 to February 7, 2003, the disputed
domain names were not in use. During
this time, December 24, 2002, Complainant registered the OBJECTIVA mark and
subsequently initiated this administrative proceeding on February 6, 2003. Pursuant to Policy ¶ 4(c)(1) it appears that
Respondent had used the domains and intended to continue using them in the
future.
Complainant asserts that Respondent’s bad
faith registration and use of the disputed domain names are demonstrated by
Respondent’s offer to sell the domain name registrations to Complainant for
$10,000. It insists that Respondent
registered the names primarily for the purpose of selling the domain name
registration to Complainant, the owner of the mark, which constitutes bad faith
according to Policy ¶ 4(b)(1). The
facts show otherwise in that Respondent registered both <objectiva.com> and <objectiva.net>
nearly two years before Complainant filed its registration for the mark and
several months before Complainant first used the names in commerce or
otherwise.
While Complainant contends that bad faith
is also evidenced by Respondent’s offer to sell the disputed domain names, it
was Complainant who initially offered to buy them. That Respondent made a
counteroffer to sell at a figure of what might be in keeping with a “market
price,” might just as well suggest good business practice as well as bad faith.
While Respondent has not alleged Reverse
Domain Name Hijacking, the facts would certainly sustain such an
allegation. Respondent recognizes that
the names are similar to Complainant’s name, but nowhere does Complainant show
or even suggest that Respondent was aware of Complainant’s name when the domain
name registration was made. How could
it? OBJECTIVA had not been in
commercial use. Complainant’s attempt
to show that Respondent never used the names in a legitimate fashion lacks
credibility; instead it shows that Complainant was not diligent in its search
of names. Finally, the bad faith issue. Complainant tried to buy the disputed names,
and then complained that Respondent wanted to sell them at a market price. When Complainant elected not to buy them, it
bided its time until this hiatus developed during the transfer time to submit
its application for the service mark, and then to assert that as the owner of
the service mark it was entitled to the disputed domain names.
DECISION
.
It
is the decision of the Panel that the Complaint be DISMISSED, and Complainant’s
demand to transfer of the names be denied.
Accordingly, it is Ordered that the <objectiva.com> and < objectiva.net> domain names
remain with Respondent.
Marilyn W. Carney, Panelist
Dated: March 13, 2003
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