SmartCompany, Inc. v Ziff Davis
Publishing Holdings, Inc.
Claim Number: FA0502000416653
PARTIES
Complainant
is SmartCompany, Inc. (“Complainant”),
2121 N. California Blvd., Suite 360, Walnut Creek, CA 94596. Respondent is Ziff Davis Publishing Holdings, Inc. (“Respondent”), represented by
Elizabeth A. McNamara, of Davis Wright Tremaine LLP, 1633 Broadway, New York, NY 10019.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <smartcompany.com>,
registered with Emarkmonitor Inc. d/b/a Markmonitor.
PANEL
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.
Timothy
D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 17, 2005.
On
February 11, 2005, Emarkmonitor Inc. d/b/a Markmonitor confirmed by e-mail to
the National Arbitration Forum that the domain name <smartcompany.com> is registered with Emarkmonitor Inc. d/b/a
Markmonitor and that the Respondent is the current registrant of the name. Emarkmonitor Inc. d/b/a Markmonitor has
verified that Respondent is bound by the Emarkmonitor Inc. d/b/a Markmonitor
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 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 14, 2005 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@smartcompany.com by e-mail.
A
timely Response was received and determined to be complete on March 14, 2005.
On March 21, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
I. Complainant Contentions
A. Identical or Confusingly Similar Issue.
Complainant
asserts common law trademark rights to the SMARTCOMPANY word mark based on
having established first commercial use of the mark in September 2002 in
association with Complainant’s hosted software business. The name of Complainant’s business is
“SmartCompany, Inc.” and the name of Complainant’s primary product offering is
“SmartCompany.”
Complainant
has filed a formal trademark registration application with the United States
Patent and Trademark Office (“USPTO”) in June 2003 that is still pending.
Complainant
registered the <smartcompany.net> domain name in September 2002, and has
been hosting its corporate website, products and service at that domain
continuously since that time.
The
Respondent’s domain name, <smartcompany.com>, is identical to
Complainant’s trademark and company name.
B. Rights or Legitimate Interests Issue.
Respondent
should be considered as having no rights or legitimate interests in respect of
the domain name that are the subject of the Complaint for the following
reasons:
(i) Respondent
does not claim rights to the SMARTCOMPANY trademark. In fact, Respondent abandoned the four applications it made for
the trademark during the late 1990s.
(ii) Complainant
has made it clear to Respondent in e-mail and telephone conversations that
Complainant intends to use the mark for commercial purposes, and Respondent has
raised no objections.
(iii) Respondent
is not hosting a website at <smartcompany.com>, and never has
hosted a website at <smartcompany.com> since first contacted by
Complainant in September 2002. This, combined with the abandonment of the
trademark applications, clearly indicates Respondent has no plans to use the
domain name in connection with a bona fide offering of goods or services.
C. Registration in Bad Faith Issue.
The
domain name should be considered as having been registered and being used in
bad faith for the following reasons:
(i) Respondent
continued to renew the domain registration year after year, even though it has
never used the domain name and has abandoned four trademark applications
associated with it.
(ii) Respondent
has renewed the domain registration twice after receiving purchase offers from
Complainant. Respondent is renewing the
registration with the sole intent of profiting from the eventual sale of the
domain to Complainant or one of Complainant’s competitors.
(iii) Respondent
has indicated to Complainant in April 2004, and in February 2005 that it would
sell the domain name to Complainant for $22,500, but can provide no reasonable
justification for demanding such a high price, except to say that “The
smartcompany.com domain has current and future value for us, and if we are
going to part with it, the price will reflect what the company believes it to
be worth.”
II. Respondent’s Contentions
A. Identical or Confusingly Similar Issue.
As
a matter of background, Respondent advises that Ziff Davis Publishing Holdings
Inc., a wholly owned subsidiary of Ziff Davis Media Inc. (“Ziff Davis”), was
created to hold the company’s intellectual property assets. Ziff Davis is an international integrated
media company focusing on the technology, video game and consumer lifestyle
markets. Particularly relevant here,
Ziff Davis has published a family of publications employing the word “Smart”
(or “Sm@rt”) in their titles, and, in anticipation of publishing another
magazine entitled “Smart Company” or “Sm@rt Company,” acquired the domain name
at issue in this proceeding. In
connection with its family of “Smart” publications, Respondent registered
various trademarks and domain names, including the domain name at issue in this
proceeding, <smartcompany.com> (the “Domain Name”), several years before Complainant even existed,
let alone purported to call itself SmartCompany and distribute a product under
this name.
In
July 2003, a company called ZeeWare, allegedly Complainant’s predecessor, asked
Respondent to assign the Domain Name to it.
When Respondent refused, Complainant -- describing itself as a “small
Bay Area technology consulting company with a new product launching soon under
the name of Smartcompany” -- offered to purchase the Domain Name.
In
conjunction with its established family of magazine titles that incorporate
“smart,” Respondent registered the <smartcompany.com> domain name
years before Complainant existed or claimed any trademark rights. This undisputed fact defeats the necessary
element of bad faith in this proceeding and is dispositive.
Complainant
has not demonstrated that the Domain Name is “identical or confusingly similar
to a trademark or service mark in which the complainant has rights,” because
Complainant did not have trademark rights in the alleged SMARTCOMPANY mark when
the Domain Name was registered (and
may not have any such rights even now).
Critical to any proceeding is Complainant’s ability
to show that its rights in the mark or domain predate Respondent’s
registration. Paragraph 4(a)(i) of the
ICANN Policy “requires the Complainant to have rights (be they strong or weak)
in a trademark before the disputed domain name is registered.” See Chiappetta v. Morales, D2002-1103 (WIPO Jan. 20, 2003).
In other words, for the Domain Name to be identical
or confusingly similar to “a trademark or service mark in which the complainant
has rights,” Complainant must have had such rights at the time of the Domain
Name’s registration. The necessary predicate is entirely absent here for the
reason that:
(a) Respondent registered the Domain Name in
August 1996.
(b) It was some six years later that Complainant
claims first use of the mark. Indeed,
Complainant asserts common law trademark rights based on its alleged first
commercial use of the mark in September 2002, and alleges that it did not
incorporate until some time after that.
Complaint ¶ (5)(a). It did not
file its trademark application until June 11, 2003.
(c) Because Complainant did not have trademark
rights at the time of Respondent’s registration, the first requirement of the
ICANN Policy is indisputably not satisfied.
Therefore, the Forum need go no further than this dispositive element in
denying the Complaint.
It is also significant that Complainant may not,
even now, have trademark rights.
Complainant’s trademark application was actually made in the name of
ZeeWare Internet Services, Inc., its alleged predecessor
Furthermore, Complainant only makes conclusory
allegations of its use of the mark on a website, without alleging that it has
sold a single product or service.
B. Rights or Legitimate Interest Issue.
Respondent has rights and legitimate interests in
the domain name.
Complainant’s allegation that Respondent “does not
claim rights to the SmartCompany trademark” is blatantly false. As Complainant knows, Respondent has
registered and used SMARTCOMPANY and similar marks extensively.
A respondent’s “use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services” before any notice
to it of the dispute, establishes its rights or legitimate interests in the
domain name for purposes of these proceedings.
ICANN Policy 4(c)(i).
As this Policy provision makes clear, making
“demonstrable preparations to use” the Domain Name or a corresponding name
satisfies the “rights or legitimate interests” requirement, even if Respondent
never actually used the mark.
Years before Complainant purported to call itself
SmartCompany, Respondent used or took demonstrable steps to use the Domain Name
and corresponding names in connection with the bona fide offering of its goods
or services.
Respondent has published several magazines with the
term “Smart” or “Sm@rt” in the title, including Smart Partner, Sm@rt
Partner, Sm@rt Reseller and Smart Business.
From 1996 through 1998, several years before
Complainant even existed, Respondent filed 46 trademark registration
applications for the name SM@RT COMPANY or SMARTCOMPANY in 14 countries. The company currently has registrations in
the European Community, Switzerland, Mexico, Japan and Venezuela and additional
pending applications in Brazil.
Respondent
registered the domain name, <smartcompany.com>, in anticipation of
a “Smart Company” title.
Although
Respondent has not yet published a “Sm@rt Company” or “Smart Company” magazine,
it has used this term in connection with another one of its publications: Sm@rt Reseller magazine
prominently featured an annual story on “The 100 Smart Companies.” Sm@rt Reseller was
discontinued as a magazine and is now published as a periodic newsletter.
In contrast to Respondent’s long-term international
use of SMARTCOMPANY and various similar marks, Complainant only recently changed
its named from Zeeware to Smart Company, represented itself to Respondent as “a
small Bay Area technology consulting company with a new product launching soon
under the name of Smartcompany” and has little or no rights or legitimate
interests in the Domain Name as set forth in ¶ (4)(a) supra.
C. Registration in Bad Faith Issue.
The domain names have not been registered in bad
faith.
Complainant cannot allege bad faith. The undisputed evidence plainly shows that
Respondent registered the Domain Name in the utmost good faith.
First, it is well established that bad faith does
not exist where Respondent registered the Domain Name before Complainant used
the name as a trademark. Here,
Complainant admits that it did not use the name “Smart Company” until long
after Respondent registered the Domain Name, as discussed above. See (4)(b)(i)(b), supra.
Complainant does not, and cannot, allege that
Respondent has registered or acquired the Domain Name in order to resell or
transfer the domain name registration to Complainant or a competitor.
Respondent is
an international media company that produces over 40 versions of its
publications in 65 countries. See
Exs. A, H. As such, Respondent
indisputably is a “bona fide entity” – not a cybersquatter who sought out
Complainant or who has engaged in a “pattern of conduct” evidencing bad
faith.
Despite
Complainant’s efforts to depict Respondent as a cybersquatter or profiteer, it
was Complainant who approached Respondent to purchase the Domain Name. Joe Zuffoletto, President and CEO of Zeeware
Inc. (Complainant’s alleged predecessor), contacted Respondent in July 2003
about acquiring the Domain Name.
Respondent’s mere entrance into negotiations, initiated by Complainant,
regarding the possible sale of the domain name (and its refusal to sell a
Domain Name obviously valued by both parties at a price chosen unilaterally by
Complainant), falls far short of showing bad faith.
Respondent has not registered the Domain Name to
prevent Complainant from reflecting its alleged mark in a corresponding domain
name.
Demonstrating
bad faith on this basis requires a showing that Respondent has engaged in a
pattern of such conduct.
Respondent is not a competitor of Complainant who
has registered the Domain Name in an effort to disrupt its business; nor has
Respondent used the Domain Name “to attract, for commercial gain, Internet
users to [its] web site or other on-line location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of [its] web site or location or of a product or
service on [its] web site or location.”
FINDINGS AND DISCUSSION
A. Identical
or Confusingly Similar: Policy ¶ 4(a)(i).
I find that Respondent registered the
disputed domain name prior to the date in which Complainant established rights
in the SMARTCOMPANY mark, and I conclude that Complainant has failed to satisfy
the requirements of Policy ¶ 4(a)(i). See
Ode v. Intership Ltd., D2001-0074
(WIPO May 1, 2001) (“We are of the unanimous view that the trademark must
predate the domain name.”); see also Intermark Media, Inc. v. Wang Logic
Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any
enforceable interest that the complainant may have in its common law mark did
not predate the respondent’s domain name registration, therefore finding that
Policy ¶ 4(a)(i) had not been satisfied).
I find that Complainant is unable to
satisfy the requirements of Policy ¶ 4(a)(i) because I conclude that the
SMARTCOMPANY mark is composed entirely of generic terms. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words
and descriptive terms are legitimately subject to registration as domain names
on a 'first-come, first-served' basis."); see also Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that
“seminar” and “success” are generic terms to which the complainant cannot
maintain exclusive rights).
B. Rights and Legitimate Interests: Policy ¶
4(a)(ii).
I find that
Respondent’s registration of the <smartcompany.com> domain name
predates Complainant’s establishment of rights in the SMARTCOMPANY mark, and I
conclude that Respondent has rights and legitimate in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See
Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying
transfer of the domain name because the respondent’s use of the PARACHUTE mark
and the domain name in question preceded any use of the service mark by the
complainant).
Respondent asserts
that it registered the <smartcompany.com> domain name in
conjunction with a series of magazines it publishes using “smart” as a prefix,
and is reserving the disputed domain name in the event that Respondent one day decides
to publish a Smart Company magazine. I
find that Respondent’s nonuse of the disputed domain name does not necessarily
indicate that Respondent lacks rights and legitimate interests in the <smartcompany.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum
Aug. 7, 2000) (finding that the respondent has rights and legitimate interests
in the domain name even though he has made no use of the website at the time of the complaint).
I also find that
the <smartcompany.com> domain name is comprised of generic terms,
and I find that Respondent has rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
See FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12,
2001) (finding that the complainant failed to establish that the respondent did
not have rights or legitimate interests in the <filmnet.com> domain name,
where the disputed domain name is wholly comprised of generic words, even
though the complainant is the owner of the FILMNET mark).
C. Registration
and Use in Bad Faith: Policy ¶ 4(a)(iii).
I find that
Respondent’s registration of the <smartcompany.com> domain name
predates Complainant’s establishment of rights in the SMARTCOMPANY mark, and I
conclude that Respondent did not register and use the domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See
Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001)
(finding that it is impossible for the respondent to register disputed domain
name in bad faith if the complainant's company did not exist at the time of
registration).
I find that
Respondent’s offer to sell the domain name registration to Complainant does not
demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA
95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to
sell a domain name is insufficient to amount to bad faith under the Policy; the
domain name must be registered primarily for the purpose of selling it to the
owner of a trademark for an amount in excess of out-of-pocket expenses).
I find that
Respondent has rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii), and I conclude that Respondent did not register
and use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Schering AG v. Metagen GmbH,
D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register
or use the domain name <metagen.com> in bad faith where the respondent
registered the domain name in connection with a fair business interest and no
likelihood of confusion was created).
Furthermore, I find
that Respondent’s nonuse of the disputed domain name does not necessarily
constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Collegetown Relocation, LLC v.
Concept Software & Tech. Inc., FA 96555 (Nat. Arb. Forum Mar. 14, 2001)
(finding no bad faith use if it is conceivable that the respondent could make a
legitimate, non-competitive use even if it had not yet done so).
Finally, I find
that Respondent’s <smartcompany.com> domain name is comprised
entirely of generic terms, and I conclude that Respondent did not register and
use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Canned Foods Inc. v. Ult. Search Inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is
a generic term, it is difficult to conclude that there was a deliberate attempt
to confuse on behalf of the respondent, and stating that “[i]t is precisely
because generic words are incapable of distinguishing one provider from another
that trademark protection is denied them”).
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.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Timothy D. O’Leary
Panelist
Dated: April 4, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum