SystemSoft Corporation v. RareNames,
WebReg
Claim Number: FA0505000474793
PARTIES
Complainant
is SystemSoft Corporation (“Complainant”),
represented by Navid Keshavarz-Nia,
Ph.D., 1823 Elgin Drive,
Vienna, VA 22182. Respondent is RareNames, WebReg (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm,
35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ecertifications.com>,
registered with Domaindiscover.
PANEL
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.
Hon.
James A. Carmody, (ret) and Ms. Diane Cabell as Panelist, and Hon. Karl V. Fink
(Ret.) as Chair.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 13, 2005.
On
May 11, 2005, Domaindiscover confirmed by e-mail to the National Arbitration
Forum that the domain name <ecertifications.com>
is registered with Domaindiscover and that the Respondent is the current
registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover 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
May 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 6,
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@ecertifications.com by e-mail.
A
timely Response was received and determined to be complete on June 7, 2005.
A
timely additional submission on behalf of Complainant was received on June 13,
2005.
All
submissions were considered by the Panel.
On June 14, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Hon. James A. Carmody, (ret) and Ms. Diane Cabell as Panelist,
and Hon. Karl V. Fink (Ret.) as Chair.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
·
Respondent
is known by the name “RareNames, WebReg” (or “RN, WebReg”). The Domain Name <ecertifications.com>
resolves into <seeq.com> which further resolves into
<buydomains.com>, this shows that the Respondent is also known as
<buydomains.com>.
·
The official service mark owned by the Complainant on which the
complaint is based is ECERTIFICATIONS.
The Complainant also owns two (2) other registered service marks
including ECERTIFICATION and E*CERTIFICATIONS.
These marks have been used by the Complainant in conjunction with online
skill assessment and certification services.
·
Complainant has been granted these officially registered service marks
by the United States Patent and Trademark Office (USPTO). The marks are used to provide goods and
services including evaluation services for contractor and job applicants,
namely online applicant testing, skills assessment, evaluation, verification,
scoring, retention, and dissemination of applicant and test information over a
global computer network. Prior to its
Domain Name <ecertifications.com>
being
acquired by Respondent, the Complainant had issued over 500,000 online skill
assessment and certifications tests.
The service mark ECERTIFICATIONS has been continuously used by
Complainant since June 10, 1990.
·
The Domain
Name <ecertifications.com> registered by the Respondent is
identical to the registered federal service mark ECERTIFICATIONS to which the
Complainant has legitimate rights. The
indistinguishable nature of the Domain Name <ecertifications.com>
and the service mark ECERTIFICATIONS has caused considerable confusion among
the public. Additionally, the
Respondent’s Domain Name <ecertifications.com> directly clashes
with the Complainant’s existing Domain Name <ecertifications.net> causing
even more confusion between the two Domain Names (.COM and .NET) resulting in
numerous complaints received by the Complainant.
·
The
Respondent has no rights or legitimate interests with respect to the Domain
Name and is not using the Domain Name <ecertifications.com> in
connection with a bona fide offering of goods or services. Additionally, the Respondent is not commonly
known by the Domain Name
·
As
illustrated in Complainant’s exhibits, the Respondent’s Domain Name <ecertifications.com>
is registered and being used in bad faith because the Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
website, by creating a likelihood of confusion with Complainant’s registered
service mark as to the source, sponsorship, affiliation or endorsement of its
website.
·
The
circumstances herein demonstrate that the Respondent has acquired the Domain
Name primarily for the purpose of
selling, renting, or otherwise transferring the Domain Name registration to the
Complainant who is the legitimate bona fide owner of the registered service
mark ECERTIFICATIONS for valuable consideration in excess of its documented
out-of-pocket costs directly related to the Domain Name. The Respondent claims
that the market value for the domain name is $16,000. However, the Respondent has offered to transfer the Domain Name
to the Complainant for the unreasonable price of $3,400. The Respondent has linked the Domain Name to
the website, <www.seeq.com>, which offers to transfer Domain Name
registrations for consideration.
B.
Respondent
·
Complainant
has failed to meet its burden of proof under each of the prongs of the Policy
and the Complaint must therefore be dismissed.
·
The fact
that Complainant was a prior registrant of the Disputed Domain is not a factor relevant
to analysis under the Policy.
Complainant failed to pay the required renewal fees for the domain name
and it was deleted. Respondent
registered the Disputed Domain on April 12, 2003, when it became available for
anyone to register. Although Complainant
argues that it has been using the mark “ecertification” continuously since
1990, there is no evidence of any present use of the mark, as a Google search
for “ecertification” and “systemsoft” produced no results. Complainant does not even own the domain
name <ecertifications.com>.
It is clear that Complainant has abandoned its rights to the Disputed
Domain.
·
Respondent
has rights and a legitimate interests in the Disputed Domain because it
incorporates the generic term “ecertification.” The mere registration of this common generic term, in and of
itself, establishes Respondent’s legitimate interest. Here, Respondent uses the Disputed Domain to promote
certification services, thus bolstering its legitimate interest based on this
bona fide offering of goods and services.
While the Disputed Domain has been offered for sale, it is
well-established under the UDRP that the offer for sale of common word domain
names constitutes the bona fide offering of goods and services, not bad faith.
·
Respondent
did not register, and has not used, the Disputed Domain in bad faith. There is no evidence it registered the
Disputed Domain with the intent to sell it to Complainant, to disrupt
Complainant’s business, to prevent if from registering a domain name reflecting
its mark, or to confuse users.
Respondent simply registered an available generic word domain name.
·
Complainant
has no enforceable trademark rights under the Policy because “ecertification”
is a generic term that describes the essential features and characteristics of
Complainant’s business. Complainant’s
trademark for “eCertification” and “eCertifications” (collectively referred to
herein as “eCertification”) are generic.
Each is created by simply joining the letter “e,” a convention meaning
computer, online, or on the internet (short for “electronic” as in “e-mail”),
with the generic word “certification.”
According to the American Heritage Dictionary of the English Language,
one definition of “e” is: “computer or computer network: e-cash; e-zine” or “From
e-mail.” A review of the archived
homepage of <ecertifications.com>, when Complainant was operating
it in April 2001 shows that Complainant used the term “ecertification” in a
descriptive manner.
·
The generic
nature of “ecertification” is further revealed by extensive third party use of
this common term. This term is used by hundreds of entities to describe an
online certification process.
·
While
Respondent has listed the Disputed Domain for sale on its web site, Respondent
did not register it to sell to Complainant. Respondent did not register the
Disputed Domain with Complainant’s trademark in mind and had no knowledge of
the trademark when it registered the name.
Respondent did not register the Disputed Domain with the intent to
disrupt Complainant’s business, or to confuse consumers seeking to find
Complainant’s web site. Respondent did
not register the Disputed Domain to prevent Complainant from owning a domain
name incorporating its trademark.
·
Respondent
registers domain names that become available for registration through
expiration and deletion. Respondent
only registers domain names, which incorporate common words, descriptive and
generic terms, and/or words and terms to which it believes no single party has
exclusive rights.
·
It is
well-established that descriptive and generic terms like “ecertification” do
not provide the holder with a right to an identical or confusingly similar
domain name. Even where a Complainant
has a registered mark as is the case here, a panel may conclude it is descriptive
or generic and find that it is not enforceable under the Policy.
·
The
Disputed Domain incorporates the mere common descriptive term
“ecertification.” It is clear that
Complainant does not have exclusive rights to this common term. On this simple fact alone, the Panel should
find that Respondent has a legitimate interest, and dismiss the Complaint
because such registration establishes the Respondent’s legitimate interest.
·
Respondent’s
legitimate interest is bolstered by the fact that it uses the Disputed Domain
in connection with a legitimate business described by the term. This
constitutes use in connection with the bona fide offering of goods and
services. Here, Respondent uses the
Disputed Domain to post related advertising links associated with
“certification.”
·
As the
Panel explained in HP Hood LLC v. hood.com, FA 313566 (Nat. Arb. Forum
Nov. 9, 2004), “[t]he principle that the mere ownership of a common word domain
should, in and of itself, establish the owner’s rights and legitimate interest
has been recognized by several ICANN panels.”
·
It is
well-established that the sale of generic domain names constitutes a bona fide
offering of goods and services where respondent is unaware of a party’s rights
in a mark.” The Hood.com decision
involved this same Respondent. There,
the 3-member panel expressly endorsed Respondent’s business of selling common
word domain names as a bona fide offering of goods and services under the
Policy.
·
There is no
evidence that Respondent had any knowledge of Complainant’s trademarks when it
registered the Disputed Domain. There
simply is no evidence that Respondent registered this common word domain name
with Complainant or its mark in mind.
Several other Panels have reached the same conclusion as Hood.com, recognizing
the legitimacy of reselling common word domain names.
·
The fact
that the Disputed Domain is composed solely of a generic term weighs heavily
against a finding of bad faith.
·
The reason
Respondent registered the Domain name is because it was deleted and
incorporates a common word. The Domain
name then became available for anyone to register. The registration of a deleted domain name does not constitute bad
faith.
·
Although
Complainant argues the mark has been in continued use, there is no evidence that
Complainant currently uses the mark in commerce at all, at least on the
Internet.
C.
Additional Submissions
Complainant
·
Respondent has evidenced a pattern of registering domain
names incorporating the marks of third parties and offering them for sale, as
evidenced in Prisma Presse v.
BuyDomains.com, D2001-1073, (WIPO Oct. 22, 2001), wherein this same
Respondent was found to have “abusively registered and used the domain name
<GEOMAGAZINE.COM> by offering it for sale.” This merely demonstrates a single case among the myriad of cases
in which the Respondent has been shown to demonstrate bad faith.
·
The Complainant has legitimate and enforceable
trademark/service mark rights under the Policy. The mark ECERTIFICATIONS has achieved incontestable status pursuant
to 15 U.S.C Section 1065. This gives
the Complainant exclusive right to use the mark. See America Online, Inc. v.
Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar 21, 2000).
·
Respondent is wrongly challenging the validity and
enforceability of the Complainant’s registered service mark “ECERTIFICATIONS”
by claiming that “The Complainant was able to slip this generic mark to the
United States Patent and Trademark Office…”
The fact is that the trademark process is a lengthy and comprehensive
legal and procedural review process by qualified and competent examining
attorneys.
·
The Respondent asserts that the mark is generic and should
not have been allowed to be registered.
The Respondent further argues that “adding the letter ‘e’ to generic terms
does not make it distinctive”.
Furthermore, the Respondent contends that the word “certifications” is a
common English language name and is only a common generic word. These assertions are in this case, factually
incorrect and without foundation. Ordinary
English words such as “limited”, “crew”, “playboy”, “quicktime”, and
“scholastic” have been granted trademark registrations that have been protected
in domain disputes.
·
If the Respondent’s incorrect assertions regarding trademark
rights were to be accepted, by its argument, the Respondent’s own registered
trademark “BUYDOMAINS.COM” would be invalid and unenforceable.
·
A recent report by
http://www.webpagepublicity.com/software-reviews.html regarding the Respondent states the following:
“BuyDomains.com has been known for keeping an eye on its
client's Domain Names only to re-register their client's Domain Names under
their own company name then sell the Domain Name back to their client for thousands
of dollars.”
·
The Respondent incorrectly asserts that the term
“ecertification” appears in over 600 third party web sites unassociated with
the Complainant.” This assertion alone
is false and misleading since by examining the Google search for “ecertifications”,
“ecertifications”, or “ecertification ecertifications”, the Complainant’s
product and services are shown more than 40 times.
·
The Complainant owned the Domain Name <ecertifications.com> for many years
before the Respondent managed to register the disputed Domain Name. On October 11, 2001, Ardent Communications,
Inc. d/b/a CAIS Internet, which was managing the Complainant’s server, filed
for reorganization under Chapter 11 bankruptcy. Its efforts to reorganize was less than successful resulting in
the ISP’s inability to improve its financial operations, business management,
and server support including its inability to renew the disputed Domain Name in
time. It is during this period that on April 12, 2003, the Respondent
registered the Domain Name the very same day it became available. The Respondent does not mention the use of
advanced software spiders that scan the WHOIS database to target harvesting
expiring domains and match them against the USPTO trademark database.
·
Respondent further claims that there is no evidence that the
mark ECERTIFICATIONS has been continuously used since 1990. The fact is that the Complainant has been
continuously using and promoting the ECERTIFICATIONS mark to provide skills
assessment, pre-screening, and certification of candidates since 1990 with over
500,000 tests administered online.
Contrary to these assertions by the Respondent, the Complainant is
operating and providing services including via its domain <ecertifications.net>.
·
Respondent is in the business of buying and selling domain
names and, by its own admission, has stockpiled over 475,000 domain names. Merely registering and stockpiling domain
names for subsequent resale fails to constitute any bona fide offering of goods
or services under such domain name or a legitimate non-commercial or fair use
of each such name.
·
The Respondent further asserts that it is using the disputed
Domain Name <ecertifications.com> to: “…promote certification services, thus
bolstering its legitimate interest based on this bona fide offering of goods
and services.” This declaration affirms
Complainant’s stated position that the disputed Domain Name is indeed
confusingly similar to the Complainant’s registered mark “ECERTIFICATIONS”
resulting in public confusion. It can
be reasonably inferred the Respondent offers services that directly complete
with services offered by Complaint.
FINDINGS
For the reasons set forth below, the Panel finds Complainant
has proven that the domain names should be transferred.
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.
The
ECERTIFICATIONS mark was registered May 16, 2000 in connection with “evaluation
services for contractor and job applicants, namely online applicant testing,
skills assessment, evaluation, verification, scoring, retention, and
dissemination of applicant and test information over a global computer
network.” The first use of the
ECERTIFICATIONS mark was June 10, 1990.
The Panel finds that Complainant’s federal registration of the
ECERTIFICATIONS mark establishes Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The
Panel rejects Respondent’s argument that the ECERTIFICATIONS mark is generic
because “once
the USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.” United States Office of Personnel Mgm’t v. MS
Tech. Inc.,
FA 198898 (Nat. Arb. Forum Dec. 9, 2003)).
Pursuant to Policy ¶ 4(a)(i), the Panel finds that Complainant only
needs to establish a trademark registration.
The
Panel also finds that the <ecertifications.com> domain name is
identical to Complainant’s ECERTIFICATIONS mark pursuant to Policy ¶ 4(a)(i)
because the domain name incorporates the mark in its entirety without
modification. The mere addition of a
generic top-level domain is insignificant under the Policy. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that the addition of a top-level domain is without legal
significance).
Complainant
has proved this element.
Complainant
contends and the Panel finds that Respondent lacks rights and legitimate
interests in the disputed domain name because “its primary goal is to profit by
selling the Domain name back to the Complainant or a Competitor at exorbitant
prices.” Merely attempting to sell a
domain name, without making use of the domain name, does not evidence rights or
legitimate interests in the domain name.
See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7,
2000) (finding rights or legitimate interests do not exist when one has made no
use of the websites that are located at the domain names at issue, other than to
sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name with the intention of selling its
rights). Therefore, the Panel finds
that Respondent is not making a bona fide offering of goods or services
in connection with the disputed domain name pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also asserts and the Panel
finds that Respondent is not commonly known by the <ecertifications.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail").
Complainant previously owned the disputed
domain name. The way Respondent
obtained the name does not give it rights or legitimate interest under the
policy. See Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration
of the same domain name is a factor in considering Respondent’s rights or
legitimate interest in the domain name); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (“Respondent’s
opportunistic registration of the Complainant’s domain name, within 24 hours of
its lapse, weighs strongly in favor of a finding that Respondent has no rights
or legitimate interests in the disputed domain name.”); see also Edmunds.com,
Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that
Respondent could not rely on equitable doctrines under the Policy to defend its
registration of the disputed domain name after the registration was
inadvertently permitted to lapse by Complainant, noting that “Respondent was
aware of the Complainant’s well-known business and its mark and intended to
exploit the mark”).
Complainant has proved this element.
The
Panel finds that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(i) because the circumstances indicate that
Respondent registered the domain name primarily to sell the domain name
registration to Complainant or a competitor of Complainant, for valuable
consideration in excess of documented out-of-pocket costs directly related to
the domain name. Respondent knew there
had been a prior registration of the domain name. The most likely customer for the domain name would be the prior
owner or a competitor. Respondent has
offered to sell the domain name registration to Complainant for $3,400. The Panel finds Respondent is in violation
of Policy ¶ 4(b)(i). See Tech. Prop., Inc v. Hussain, FA 95411
(Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent offered
the domain names for sale for $2,000); see also World Wrestling Fed’n Entmt., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the
domain name in bad faith because it offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad
faith when it requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name).
The Panel also finds that the way in which
Respondent acquired the domain name shows Respondent registered and used the
disputed domain name in bad faith. See
BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of Complainant’s failure to renew a domain name); see also R-H-Interactive Jobfinance v. Mooburi Servs.,
FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that Respondent’s
registration and use of the <jobfinance.com> domain name “immediately
after Complainant failed to timely renew the domain name registration” was
evidence of bad faith).
DECISION
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ecertifications.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl
V. Fink (Ret.), Chair
&
Hon. Carmody (Ret.), Panelist
I dissent and
would find for the Respondent.
Diane Cabell, Panelist
Dated: June 28, 2005
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