DataPrism LLC v. Path-Wise Corporation / Robert Mullendore
Claim Number: FA1310001523695
Complainant is DataPrism LLC (“Complainant”), represented by William Lyon of DataPrism LLC, Washington, USA. Respondent is Path-Wise Corporation / Robert Mullendore (“Respondent”), Montana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dataprism.com>, registered with eNom, Inc.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2013; the National Arbitration Forum received payment on October 9, 2013.
On October 10, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dataprism.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 October 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@dataprism.com. Also on October 11, 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 October 31, 2013.
On November 5, 2013 an Additional Submission from Complainant was received.
On November 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta 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 Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant
a) Complainant operates a software development business. Complainant develops web and mobile application platform software.
b) Complainant contends it has rights in the DATAPRISM mark, used in connection with software development. Complainant is the owner of a registration with the United States Patent and Trademark Office (“USPTO”) (See Reg. No. 3,839,651, first used in commerce November 11, 2005, filed October 11, 2007, registered August 31, 2010).
c) Respondent’s <dataprism.com> domain name is identical to Complainant’s DATAPRISM mark.
d) Respondent does not own any rights or legitimate interests in the <dataprism.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <dataprism.com> domain name resolves to an error page and has been inactive since its registration in 2002. See Complainant’s Doc ID 15835488.
e) Respondent registered and is using the <dataprism.com> domain name in bad faith.
a. Respondent has been inactively holding the disputed domain name since 2002, and the resolving website currently displays an error message. See Complainant’s Doc ID 15835488.
f) Respondent registered the <dataprism.com> domain name on August 23, 2002.
B. Respondent
a) Respondent operates a software development company, which has invested $10 million toward the development of software to be used in conjunction with the <dataprism.com> domain name. The disputed domain name was registered in 2002 as part of the “Path-Wise business plan” for the “Chrono-Logic Date Prism” comparative evaluation software system currently being developed, along with several other evaluation software systems.
b) In paragraphs three through seven of its Response, Respondent provides e-mail excerpts that Respondent states “provide a general understanding of Respondent’s original and ongoing plans for the use of the term Data Prism and the <dataprism.com> website.”
c) Respondent’s plans for the <dataprism.com> domain name are different from Complainant’s business as described via the <dataprism.net> domain name.
d) Complainant has never contacted Respondent to discuss this matter.
C. Additional Submissions
Complainant’s Additional Submission
a) Complainant is skeptical that Respondent’s business endeavor is legitimate. Complainant finds it hard to believe that an on-going enterprise in which Respondent proposes to have “invested approximately $10 million in cash” for over a decade would still maintain an inactive website.
b) The USPTO website has Respondent’s DATA PRISM mark listed as having been abandoned as of March 8, 2010. This further negates Respondent’s rights and legitimate interests in the domain name.
The disputed domain name was registered in 2002. Complainant is the owner of a registration with the USPTO (See Reg. No. 3,839,651, first used in commerce November 11, 2005, filed October 11, 2007, registered August 31, 2010).
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.
Complainant contends it has rights in the DATAPRISM mark, used in connection with software development. Complainant states it is the owner of a registration with the USPTO (See Reg. No. 3,839,651, first use in commerce November 11, 2005, filed October 11, 2007, registered August 31, 2010). The Panel finds that USPTO registration is satisfactory evidence of Policy ¶ 4(a)(i) rights. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Past panels have found that the filing date is the relevant date in which rights are established for a trademark. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
However, the Panel notes that Respondent’s registration for the <dataprism.com> domain name predates not only the filing date for Complainant’s DATAPRISM trademark registration, but also the date listed for the first use in commerce on the trademark registration.
While Respondent argues that its registration of the <dataprism.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant claims Respondent’s <dataprism.com> domain name is identical to Complainant’s DATAPRISM mark. The Panel notes that the disputed domain name adds the generic top-level domain (“gTLD”) “.com.” Past panels have found that the addition of a gTLD is irrelevant in regards to Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Therefore, the Panel finds that Respondent’s <dataprism.com> domain name is identical to Complainant’s DATAPRISM mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent states that it operates a software development company, which has invested $10 million toward the development of software to be used in conjunction with the <dataprism.com> domain name. Respondent suggests that the disputed domain name was registered in 2002 as part of the “Path-Wise business plan” for the “Chrono-Logic Date Prism” comparative evaluation software system currently being developed, along with several other evaluation software systems. Further, in paragraphs three through seven of its Response, Respondent provides e-mail excerpts that Respondent states “provide a general understanding of Respondent’s original and ongoing plans for the use of the term Data Prism and the <dataprism.com> website.” Past panels have found that a respondent who has submitted substantial evidence establishing demonstrable preparations for use of a disputed domain name has legitimate rights or interests in that domain name under Policy ¶ 4(a)(ii). See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002) (finding that prior to having received notice of the dispute, the respondent had made demonstrable preparations to use the disputed domain name by submitting “substantial, overwhelming and undisputed evidence” of those preparations); see also SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
The Panel notes that while Respondent has not provided any evidence outside of its Response, the Response does include the aforementioned e-mail excerpts. The Panel determines Respondent has made demonstrable preparations for use of the <dataprism.com> domain name, and the Panel finds that Respondent has established legitimate rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel notes that the earliest claimed use of the DATAPRISM mark by the Complainant occurred over three years after the disputed domain name’s August 23, 2002 registration. In the case of Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002), the panel found that the complainant could not carry its burden under Policy ¶ 4(a)(ii) when the respondent had registered the domain name long before the complainant had made any use of its mark in commerce. The Panel finds that Respondent does not lack Policy ¶ 4(a)(ii) rights and legitimate interests because it has held the registration to this domain name longer than Complainant has made use of the DATAPRISM mark.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel has concluded that Respondent has rights or legitimate interests in the <dataprism.com> domain name pursuant to Policy ¶ 4(a)(ii), and the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <dataprism.com> domain name in bad faith, as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent states that it operates a software development company, which has invested $10 million toward the development of software to be used in conjunction with the <dataprism.com> domain name. The disputed domain name was registered in 2002 as part of the “Path-Wise business plan” for the “Chrono-Logic Date Prism” comparative evaluation software system currently being developed, along with several other evaluation software systems. Further, in paragraphs three through seven of its Response, Respondent provides e-mail excerpts that Respondent states “provide a general understanding of Respondent’s original and ongoing plans for the use of the term Data Prism and the <dataprism.com> website.” Past panels have found that a respondent who can prove the existence of a business connected to the disputed domain name, even if the disputed domain name is not yet active, is not acting in bad faith pursuant to Policy ¶ 4(a)(iii). See also Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where the respondent was using the domain name in connection with its business even though no website was yet developed); see also Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Respondent asserts that as it registered this domain name, Complainant cannot simply take the domain name for no reason. The Panel agrees here that Complainant’s showing of Policy ¶ 4(a)(iii) bad faith registration is an uphill fight because Respondent registered the <dataprism.com> domain name years before Complainant made any actual use of its mark in commerce. As such, the Panel finds that Respondent’s domain name registration predates the earliest use of the mark, and thus Policy ¶ 4(a)(iii) is unsatisfied as Complainant cannot prove bad faith use and registration. See, e.g., Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (concluding that because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dataprism.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: November 16, 2013
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