NorthSouth GIS NZ Limited (Formerly known as Explorer Graphics Limited) v. McGrath, Tim
Claim Number: FA1505001617816
Complainant is NorthSouth GIS NZ Limited (Formerly known as Explorer Graphics Limited) (“Complainant”), New Zealand. Respondent is McGrath, Tim (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geocirrus.com>, registered with NETWORK SOLUTIONS, LLC..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.
On May 6, 2015, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the Forum that the <geocirrus.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 May 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2015 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@geocirrus.com. Also on May 8, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant’s contentions are reproduced verbatim:
“[Complainant’s trademark is ] Geocirrus – which the provision of on-line non-downloadable software for enabling users to access and participate in a geospatial cloud computing network; advisory, information and consultancy services in the field of cloud computing geospatial applications and networks; hosting of geospatial software as a service; advisory, information and consultancy services in the field of hosting of geospatial software as a service; mapping services; advisory, information and consultancy services in the field of mapping services. (Details from the Geocirrus trademark record).
“Geocirrus.com is identical to the trademark lodged by North South GIS NZ (In its previous guise of Explorer Graphics Limited (EGL) Geocirrus, which is trademarked with the United States Patent and Trademark Office. Registration number 4237531.
“In addition – NorthSouth GIS NZ owns and operates the following domains: geocirrus.net, geocirrus.org, geocirrus.co.nz, and geocirrus.us, which point to information our geospatial solution, Geocirrus. There is potential confusion for our clients and vendors, upon visiting geocirrus.com – then seeing no content, or anything related to the service, Geocirrus.
“Currently, the geocirrus.com domain holds no content. NorthSouth GIS NZ Limited, and in our previous incarnation, Explorer Graphics Limited (Wherein we registered the Geocirrus trademark), has spent the last few years, and considerable resources, building Geocirrus as a brand.
“Geocirrus.com site is currently not showing any content. We have also tried to purchase the domain from the Respondent, via a third party, but the Respondent did not respond to these requests.
“The Geocirrus.com site, as it currently stands, appears to be no more than a “holding” or “cyber squatting” site.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the mark GEOCIRRUS dating back at the earliest to June 29, 2011.
The disputed domain name was registered on March 26, 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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
For the reasons set forth below, the Panel will not analyse this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
For the reasons set forth below, the Panel will not analyse this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
According to 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"):
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
…
“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
Complainant’s US trademark registration was filed on April 3, 2012. It refers to a New Zealand mark dated July 1, 2011. Complainant claims common law trademark rights arising from its use of various domain names. Those domain names were registered on or after June 29, 2011.
Complainant has not argued that its trademark rights arose earlier, much less presented evidence to that effect.
The disputed domain name was registered on March 26, 2010. Thus, in principle, Respondent did not register the domain name in bad faith.
Complainant has not argued that any of the exceptions outlined in the cited WIPO Overview apply to the present case, nor has it argued that some other circumstances indicate bad faith registration.
Consequently, the Panel finds that Respondent has failed to satisfy its burden of proving that Complainant registered the disputed domain name in bad faith in the sense of the Policy. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
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 <geocirrus.com> domain name REMAIN with Respondent.
Richard Hill, Panelist
Dated: June 4, 2015
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