Wave59 Technologies Int'l Inc. v. VolumeDomains.com
Claim Number: FA1110001413550
Complainant is Wave59 Technologies Int'l Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA. Respondent is VolumeDomains.com (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <w59.com>, registered with Wild West Domains, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2011; the National Arbitration Forum received payment on October 31, 2011.
On October 31, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <w59.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 November 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2011 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@w59.com. Also on November 4, 2011, 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 November 22, 2011.
Complainant’s Additional Submission was received on November 28, 2011, and deemed compliant with Supplemental Rule 7. Respondent’s Additional Submission was received on November 29, 2011, and deemed compliant with Supplemental Rule 7.
On November 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has sold financial services software under the mark WAVE59 since 1999. Complainant has also referred to its software as W59 since at least as early as 2009. Complainant holds two relevant U.S. trademark registrations: the word mark WAVE59, registered June 5, 2005, and first used on October 1, 1999; and a stylized Mark for W59 where the “W” is white in a black circle, registered May 18, 2010--the mark was first used February 2, 2009 and first used in commerce on December 15, 2009.
Respondent is the registrant of the disputed domain name <w59.com>, which Complainant contends is confusingly similar to its W59 mark. Complainant further asserts that Respondent lacks rights or legitimate interests in the disputed domain name; in support thereof, Complainant states inter alia that Respondent is not using the domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the domain name, and has not been commonly known by the domain name. Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith, on the grounds that Respondent is using the domain name to create confusion with Complainant’s mark for commercial gain and to disrupt Complainant’s business, and that Respondent’s selection of the domain name was calculated to take advantage of Internet users who mistakenly type “w59.com” instead of “wave59.com” when attempting to access Complainant’s website.
B. Respondent
Respondent states that it registered the disputed domain name in 2004, nearly six years prior to Complainant’s first use of the W59 mark in commerce. Respondent further asserts that its review of archived versions of Complainant’s website via archive.org indicates no references to W59 prior to March 2010. Respondent contends that it registered the disputed domain name because W59 is a generic term subject to substantial and longstanding third-party use. Respondent claims that it had never heard of Complainant or its website until the present proceeding was initiated. Respondent accuses Complainant of initiating this proceeding with no bona fide basis, in an attempt at reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission, Complainant asserts that it has used its W59 mark since at least as early as March 2, 2004, and that it has common-law trademark rights arising from such use. Complainant also contends that the disputed domain name is confusingly similar to Complainant’s WAVE59 mark. Complainant also reiterates various allegations from its initial submission. Respondent’s Additional Submission similarly reiterates allegations from its initial submission, and takes issue with Complainant’s descriptions of exhibits accompanying its Additional Submission.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights. The Panel further finds, however, that Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith. The Panel declines to enter a finding as to whether Respondent has rights or legitimate interests in respect of the disputed domain name.
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 holds a U.S. trademark registration for W59, a words plus design mark comprised of the term “W59” presented in stylized form. The textual component of the mark is clearly its predominant aspect. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶ 1.11, available at http://www.wipo.int/amc/en/domains/search/overview/#111. The disputed domain name is comprised of the textual component of Complainant’s mark, to which the top-level domain suffix “.com” has been appended. The Panel therefore finds that the disputed domain name is identical to Complainant’s registered mark W59 for purposes of paragraph 4(a)(i) of the Policy.
Because the Panel’s finding as to bad faith is dispositive, the Panel declines to address the question of rights or legitimate interests.
Paragraph 4(a)(iii) of the Policy requires Complainant to prove that Respondent both registered and is using the disputed domain name in bad faith. A finding of bad faith registration requires proof that Respondent was aware of Complainant or its mark when it registered the domain name, and that the registration was in some way targeted at Complainant or its mark. See, e.g., HotCam, Ltd. v. RNIS Telecommunication inc., FA 1273417 (Nat. Arb. Forum Aug. 24, 2009); Carboni v. Domain Admin, eSources Comm’ns, D2008-0970 (WIPO Sept. 2, 2008). Yet according to the Complaint, Complainant did not begin using its W59 mark until several years after Respondent registered the disputed domain name. The other ground for bad faith asserted by Complainant—that Respondent registered the domain name <w59.com> in order to take advantage of Internet users who might mistakenly type “w59” instead of “wave59”—is utterly implausible, in the Panel’s view. For these reasons, the Panel finds that Complainant has failed to meet its burden of proving that the disputed domain name was registered in bad faith.
The Panel considers it inappropriate to consider the new material in Complainant’s Additional Submission that effectively contradicts both its initial submission and its federal trademark registration certificate as to when Complainant commenced use of its W59 mark. Complainant has offered no explanation why this material could not have been included in its initial submission, nor any other grounds that might qualify as extraordinary circumstances warranting its consideration. See e.g., Sina.com Online v. CyberTavern, LLC, FA 1235499 (Nat. Arb. Forum Jan. 13, 2009) (describing circumstances under which additional submissions should be considered). Even if this material were considered, however, the Panel likely would not deem it credible, in light of the fact that Complainant applied for its W59 mark in May 2009 based upon an intent to use the mark in the future, rather than based upon existing use. Furthermore, even apart from that flaw, there still would not be sufficient evidence to support an inference that Respondent was aware of Complainant’s W59 mark when it registered the disputed domain name.
Complainant knew or should have known, based upon the facts known to it when it filed the Complaint in this proceeding, that it could not prove bad faith registration. Upon being called out for the obvious chronological deficiency in its case by the Response, Complainant attempted to change the facts, contradicting the evidence it had previously submitted. The Panel considers these circumstances sufficient to support a finding that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking. See. e.g., HotCam, Ltd. v. RNIS Telecommunication inc., FA 1273417 (Nat. Arb. Forum Aug. 24, 2009); Datalyst LLC v. Estes, FA 954109 (Nat. Arb. Forum May 9, 2007).
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <w59.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: November 30, 2011
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