Storus Corporation v. Marketpoints.com New
Media Branding Services, c/o DNS Administrator
Claim Number: FA0602000639882
PARTIES
Complainant is Storus Corporation (“Complainant”), represented by Joseph J. Zynczak, of Rubinstein Law Group, 100 Pine St., 20th Fl, San Francisco, CA 94111. Respondent is Marketpoints.com New Media Branding Services, c/o DNS Administrator (“Respondent”), represented by Molly Kangas, of Eyetooth Branding and Trademark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartpocket.com>,
registered with Enom, Inc.
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.
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 7, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 9, 2006.
On February 8, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <smartpocket.com>
domain name is registered with Enom, Inc. and that the 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-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On February 15, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 7, 2006 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@smartpocket.com by e-mail.
A timely Response was received and determined to be complete on March 7,
2006.
An Additional Submission was timely received March 13, 2006 and Panel
finds it to be a good faith and reasonable argument and will be considered by
Panel as presented for a proper purpose.
On March 15, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Richard B. Wickersham, Judge (Ret.), as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
This Complaint is hereby submitted for decision in accordance with the
Uniform Domain Name Dispute Resolution Policy, adopted by the Internet
Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved
by ICANN on October 24, 1999 (ICAN Policy), and the Rules for Uniform Domain
Name Dispute Resolution Policy (ICANN Rules), adopted by ICANN on August 26,
1999 and approved by ICANN on October 24, 1999, and the National Arbitration
Forum (NAF) Supplemental Rules (Supp. Rules). ICANN Rule 3(b)(i).
COMPLAINANT INFORMATION
[a.] Name: Storus
Corporation
[b.] Address: 12919 Alcosta, Suite 1, San Ramon,
California 94583
[c.] Telephone: 415-277-1900 (Fax and Phone #’s of
Authorized Representative)
[d.] Fax: 415-277-1919
[e.] E-Mail: jay@rublaw.com
COMPLAINANT’S AUTHORIZED REPRESENTATIVE
[a.] Name: Joseph
J. Zynczak
[b.] Address: Rubinstein Law Group, 100 Pine St.,
20th Fl
San
Francisco, CA 94111
[c.] Telephone: 415-277-1900
[d.] Fax: 415-277-1919
[e.] E-Mail: jay@rublaw.com
RESPONDENT INFORMATION
[a.] Name: Marketpoints.com
New Media Branding Services c/o DNS
Administrator
[b.] Address: 1800 Bryant Street, San Francisco,
CA 94110
[c.] Telephone: 646-265-5307
[d.] Fax: Unknown
[e.] E-Mail: home@marketpoints.com
DISPUTED DOMAIN NAME
[a.] The following
domain name is the subject of this Complaint: ICANN Rule 3(b)(vi).
SMARTPOCKET.COM
[b.] Registrar
Information: ICANN Rule 39b)(vii).
[c.] Trademark/Service
Mark Information: ICANN Rule 3(b)(viii).
The trademark on which this complaint is based is SMART POCKET. The United States Patent and Trademark
(“USPTO”) Registration Number is 2,768,687.
The goods with which the mark is used are described in the USPTO
Registration as: CASES WITH CLIPS ADAPTED TO HOLD AND RETAIN PERSONAL
IDENTIFICATION, MONEY BOTH PAPER AND COIN, CREDIT CARDS, MEMO ITEMS, BUSINESS
CARDS, PERSONAL ACCESSORIES, AND THE LIKE AND ADAPTED TO BE CARRIED IN A USER’S
POCKET, PURSE, HANDBAG OR PACK.
The domain name <smartpocket.com> is identical to
Complainant’s registered trademark SMART POCKET. Complainant filed for the mark on June 7, 2001 and the mark was registered
on September 30, 2003. Complainant has
been using the mark in commerce since February 1, 2001. The goods the mark covers can be found for
sale in many locations and online, including QVC (both online and on
television), <pricegrabber.com>, and <aperfectwallet.com>. Since the goods have been in commerce,
Complainant has sold approximately 300,000 items. ICANN Rule 3(b)(ix)(1); ICANN Policy 4(a)(i).
Respondent Marketpoints.com New Media Branding Services c/o DNS
Administrator (“Marketpoints.com”) is a reseller of domain names. Its website’s main page states
“Marketpoints.com has a strong catalogue of innovative, untrademarked domain name properties available for new business
use.” (Emphasis added).
Marketpoints.com has made no demonstrable use of the domain name at
issue. (See ICANN Rule 3(b)(ix)(2);
ICANN Policy 4(c)(i). A web search for <smartpocket.com>
leads to a web page that states, “This is a Marketpoints.com property. This domain may be available to new
startups.” The Respondent has never
been known by the domain name and has no intent to utilize it in its own
business for any other reason except to resell it. See ICANN Policy 4(c)(ii). The Respondent does business as Marketpoints.com and has no
affiliation with and does not sell any of Complainant’s products. In addition, Respondent Marketpoints.com
makes no legitimate noncommercial or fair use of the domain name. It only offers it for resale to the public.
B. Respondent
This Response specifically responds to the statements
and allegations contained in the Complaint and includes any and all bases for
Respondent to retain registration and use of the disputed domain name. ICANN
Rule 5(b)(i).
[a.] Complainant has filed a US trademark registration for the generic textstring "smart pocket," as have six other parties. There are also 70,000 webpages for companies and products using a "smart pocket" name. Within the first 100 webpages returned by Google, the Complainant does not appear, but one does see two other unrelated companies selling luggage products using the generic term "smart pocket."
ICANN Rule 3(b)(ix)(1);
ICANN Policy ¶ 4(a)(i).
[b] Respondent (domain-name holder) has rights and legitimate
interests in respect to the domain name that is the subject of the complaint.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
Respondent coins and sources new
and trademarkable name options for clients starting new businesses, products
and services. Eligibility to acquire
the name, and the viability of the name for the client under US trademark law,
is executed via the attorneys at Eyetooth Trademark as stated on the
Marketpoints.com page. As noted, "if one seeks a name with which to build
a new and non-infringing mark, one is generally eligible to buy a
Marketpoints.com name." Further, Eyetooth Trademark's contracts
secure "good-faith intent to build a legal mark" and enable the
reclamation of the name should the buyer misrepresent their trademark
eligibility.
Three and a half years before the date of Complainant's trademark registration (and a year before Complainant's first use in commerce), the Respondent registered the domain name <smartpocket.com> for an online retailer of small portable electronics such as cell phones, MP3 players, and personal data assistants. Upon abandonment of the name concept by the client, the name was retained by Marketpoints.com. Because of its generic nature and broad utility, it has repeatedly been evaluated for clients since the 2000 registration.
Respondent and Eyetooth Trademark
are currently branding smartpocket.com for a high-profile client, whose field
of trade is wholly unrelated to Complainant's.
Respondent submits that this development has given rise to Complainant's
sudden interest after five years of indifference.
[c.] The domain name should not be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
The Respondent registered the domain name <smartpocket.com> in April 2000. Complainant's SMART POCKET mark was registered September 2003. Complainant's first use in commerce of a SMART POCKET name was February 2001. There is no conceivable way Respondent could have known of Complainant's mark, as their mark did not yet exist when Respondent registered the domain name at issue. Thus, Complainant has failed to establish bad faith registration and use of the domain name <smartpocket.com> pursuant to Policy ¶ 4(a)(iii). See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); 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 Policy ¶ 4(a)(iii)); see also It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005) ("[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith."); see also U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”).
Further, the domain name <smartpocket.com> has never been made available for public sale, nor for sale to Complainant. Complainant alleges that the name is available for public sale in the complaint, but the same Marketpoints.com page they reference in the complaint clearly states that "eligibility to buy depends on several factors" and requires parties "intending to build a new and non-infringing mark" to apply via the Eyetooth trademark firm.
The complaint erroneously states that there is an Eyetooth Trademark "pricing page" indicating domains may be available for 1K to 10K. Reading this page reveals that clients are asked to stipulate a budget, within which Eyetooth will work to execute trademark searches and either coin a new brand or assemble options for viable names owned by private parties. The domain name <smartpocket.com> has never been made available for public sale.
In light of past issues raised before this forum,
Respondent hereby declares that <smartpocket.com>
and all of Respondent's web pages past and present are entirely devoid of any
pornographic or gambling content, or advertising for same, or
"mousetraps" or any similar unscrupulous advertising techniques.
C. Additional Submissions
An Additional Submission was timely received March 13, 2006 and the
Panel finds it to be a good faith and reasonable argument that will be
considered by the Panel as presented for a proper purpose.
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.
FINDINGS
Complainant Storus Corporation asserts that it has established rights in the SMART POCKET mark through registration of the mark with the USPTO (“Reg. No. 2,768,687 issued September 30, 2003). The goods with which Complainant uses the mark include cases with clips adapted to hold and retain personal identification, credit cards, memo items, business cards and personal accessories. The Panel finds that Complainant has rights in the SMART POCKET mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant also asserts that the <smartpocket.com> domain name is identical to complainant’s SMART POCKET mark because it incorporates Complainant’s mark in its entirety with the only difference being the addition of the generic top-level domain “.com,” which is not sufficient to distinguish the domain name from the mark. The Panel finds that Respondent’s domain name is identical to Complainant’s SMART POCKET mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).
Rights or Legitimate
Interests Policy ¶ 4(a)(ii).
The Panel finds that that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Complainant asserts that Respondent
is in no way associated with Complainant and the record does not reflect that
Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly
known by the domain name. Thus, the
Panel determines that pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights
and legitimate interests in the domain name.
See 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"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Furthermore, Complainant contends
that Respondent is a reseller of domain names, has not made any demonstrable
use of the disputed domain name for the past six years and therefore, lacks
rights and legitimate interests in the domain name. The Panel finds that Respondent’s non use of a the disputed
domain name is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that the respondent made preparations
to use the domain name or one like it in connection with a bona fide
offering of goods and services before notice of the domain name dispute, the
domain name did not resolve to a website, and the respondent is not commonly
known by the domain name); see also TMP Int’l,
Inc. v. Baker Enters., FA 204112 (Nat.
Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive
holding of the domain name does not establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Respondent’s passive holding of the disputed domain name for six years is evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant contends that Respondent
registered or acquired the domain name primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to Complainant
or a competitor of Complainant, for valuable consideration. The Panel finds that Respondent’s use of the
disputed domain name constitutes bad faith use and registration pursuant to
Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347
(WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any
context other than to offer it for sale to the complainant amounts to a use of
the domain name in bad faith); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smartpocket.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Richard B. Wickersham, Judge (Ret.), Panelist
Dated: March 27, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration ForuM