FileSense, Inc. v. Bogdan Mykhailets
Claim Number: FA1308001513153
Complainant is FileSense, Inc. (“Complainant”), represented by Ronnie Allen Sheppick, Utah, USA. Respondent is Bogdan Mykhailets (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filesense.com>, registered with Moniker Online Services LLC.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2013; the National Arbitration Forum received payment on August 5, 2013.
On August 6, 2013, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <filesense.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC verified that Respondent is bound by the Moniker Online Services LLC 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 August 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2013 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@filesense.com. Also on August 8, 2013, 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 August 23, 2013.
On September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Paragraphs 1 and 2 of the Rules.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant has a United States Patent and Trademark Office (“USPTO”) trademark registration for its FILESENSE mark (Reg. No. 4,375,314 filed November 15, 2012; registered July 30, 2013), used to offer SaaS CMS case management services to a wide number of attorneys and law firms.
2. Complainant has used the mark in its business since 2011.
3. Respondent’s registered <filesense.com> domain name is identical to the FILESENSE mark.
4. Respondent or his agents have repeatedly attempted to sell the <filesense.com> domain name to Complainant for various prices.
5. For over a year and a half, Respondent used the <filesense.com> domain name to host click-through advertisements.
B. Respondent
Respondent made the following contentions.
1. Respondent acquired the <filesense.com> domain name for $350 on January 16, 2013, through an online auction that he did not expect to win due to budget limitations.
2. Respondent has never contacted Complainant about selling the disputed domain name, nor has Respondent communicated with third parties that allegedly offered to sell the disputed domain to Complainant.
3. Respondent acquired the domain name due to the attractiveness of the descriptive elements – the potential value of the words “file” and “sense” in advertising file sharing and file storage services.
4. Respondent acquired the domain for a legitimate purpose, without the intent to trade on the rights or reputation of Complainant’s trademark.
· Complainant used the name FileSense while developing an SaaS CMS product to provide case management services to attorneys and law firms.
· Complainant filed for the registration of the FILESENSE mark on November 15, 2012, and the mark was registered on July 30, 2013.
· A third party registered the <filesense.com> domain name December 9, 2010.
· Respondent purchased the <filesense.com> domain at auction for $350 on January 16, 2013.
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.
Preliminary Issues
The Complainant previously submitted a complaint to the National Arbitration Forum (“NAF”) on January 31, 2013, contesting Respondent’s registration of the <filesense.com> domain. That complaint and a response by the Respondent were considered by the NAF in FileSense, Inc. v. Bogdan Mykhailets, FA 1483102 (Nat. Arb. Forum Mar. 11, 2013), and a Panel chaired by the Honorable Neil Anthony Brown rendered a decision on March 11, 2013. That Panel rejected the complaint on the grounds that the Complainant failed to satisfy the first criterion under ¶ 4(a)(i) of the Policy. Complainant here omitted this fact and failed to address the prior decision in its Complaint.
The standard for applying res judicata in a UDRP proceeding was developed in Grove Broadcasting Co. Ltd. V. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000). The Grove Broadcasting panel analyzed claim preclusion in court litigation and international arbitration, and developed four factors to evaluate a re-filed claim. To re-file a UDRP claim, a Complainant typically must show (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice. Id. The Complainant must meet a “high” burden of proof to avoid claim preclusion. See, e.g., Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001).
The Complainant’s recent USPTO registration of the FILESENSE mark provides new material evidence to Complainant’s case under Policy ¶ 4(a)(i). As Complainant has overcome the prior reason for denial by establishing rights in the FILESENSE mark, a decision as to the remaining elements of the Policy is warranted.
Complainant has offered sufficient evidence to prove that it is the owner of a valid United States trademark for the term FILESENSE. The date of a USPTO trademark registration ordinarily relates back to the filing date of the application. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002). Complainant has thus established trademark rights under ¶ 4(a)(i) dating back to November 15, 2012, and has satisfied the threshold requirement that it hold trademark rights in the disputed domain. F. Hoffman-La Roche AG v. Relish Enterprises, D2007-1629 (WIPO Dec. 17, 2000).
To satisfy ¶ 4(a)(i), the disputed domain must be identical or confusingly similar to the Complainant’s trademark. Here, the disputed domain consists of (1) Complainant’s registered FILESENSE mark and (2) the suffix “.com”. As the addition of a generic top-level domain is not relevant to distinguish a mark, the disputed domain name is identical to Complainant’s registered mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000). The Panel thus concludes that Complainant has satisfied the first element of the Policy.
Under ¶ 4(a)(ii), a Complainant must first show a prima facie case that the Respondent lacks rights or legitimate interests in a domain name. After such a showing, the burden of rebuttal shifts to the Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). As expressed in ¶ 4(c)(i), rights or legitimate interests in a domain name may be demonstrated by showing that “before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” The business of buying domain names to host advertisements may be considered a legitimate business purpose incidental to commerce through the internet. McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007). Thus, the acquisition of a domain for advertising purposes may constitute a bona fide offering of goods or services.
In the instant case, Respondent claims that it acquired the <filesense.com> domain because the descriptive terms “file” and “sense” are valuable in the advertisement of file sharing services. Respondent referred to Google’s use of “adsense” in online advertising and “Websense,” a company that provides online security. A Respondent may have rights in a domain name comprised of dictionary words if the domain is demonstrably intended to host content in connection with the meaning of those words. Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO November 15, 2000). In this dispute, the domain directs users to file storage services. There is no evidence that Respondent sought to mislead potential customers of the Complainant, nor is there evidence that Respondent was aware of Complainant’s trademark at the time it acquired the domain.
For the foregoing reasons, this Panel finds that the Complainant has failed to show a prima facie case that the Respondent lacks rights or interests in the <filesense.com> domain name. Therefore, this Panel finds that the Complainant has failed to prove the second element of the Policy.
For purposes of completeness, this Panel will analyze whether Respondent’s registration and use of the disputed domain was in bad faith. Complainant asserts that the previous owner of the <filesense.com> domain repeatedly attempted to sell the domain to Complainant. Complainant further asserts that Respondent is likely associated with the prior owners, and should have this bad faith conduct imputed upon him. A Respondent’s offer to sell the domain name to the Complainant may create an inference of bad faith under ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000). In this dispute, however, Complainant did not provide any evidence establishing Respondent as the same entity as the prior registrant, and failed to introduce any documents or other evidence corroborating the alleged offers.
Complainant has thus failed to provide evidentiary support for its allegations of Respondent’s bad faith registration and use of the disputed domain. Mere assertions of bad faith are insufficient to satisfy Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Accordingly, the Panel concludes that Complainant has not satisfied its burden of demonstrating that Respondent has registered the <filesense.com> 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 <filesense.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: September 18, 2013
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