Greenline Financial Technologies, Inc. v.
Griffin IT Media, Inc. a/k/a Tim Griffin
Claim Number: FA0605000701179
PARTIES
Complainant is Greenline Financial Technologies, Inc. (“Complainant”), represented by Michael E. Sellers, of Gable & Gotwals, 1100 ONEOK Plaza, 100 W. Fifth Street, Tulsa, OK 74103-4217. Respondent is Griffin IT Media, Inc. a/k/a Tim Griffin (“Respondent”), represented by Gregory D. Latham, of Jones, Walker, Waechter, Poitevent, Carrere & Denegre, L.L.P, 201 St. Charles Avenue, New Orleans, LA 70170.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <certifix.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.
Honorable Karl V. Fink (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 4, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 8, 2006.
On May 4, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <certifix.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 May 11, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 31, 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@certifix.com by e-mail.
A timely Response was received and determined to be complete on June 1,
2006.
A timely Additional Submission was received from Complainant on June 5,
2006, in accordance with The Forum’s Supplemental Rule #7.
A timely Additional Submission was received from Respondent on June 12,
2006, in accordance with The Forum’s Supplemental Rule #7.
On June 16, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Respondent’s first level domain name “certifix” is identical and
confusingly similar to Complainant’s CERTIFIX mark, which was registered on
July 12, 2005 and has been in continuous use in commerce using a web-based
interface since at least June 1, 2004.
Respondent has no rights or legitimate interests in the <certifix.com>
domain name. When <certifix.com>
is typed into the browser’s URL line, the user is taken to a web site
containing links where consumers are inundated with a plethora of pop-up
windows. The pop-up windows and links
redirect consumers to numerous other websites.
The subject domain name was registered in bad faith primarily for the
purpose of reselling it.
Respondent registered the disputed domain name for commercial
gain. Respondent’s domain name
intentionally diverts Internet users to Respondent’s websites through the use
of a domain name confusingly similar to Complainant’s mark.
B. Respondent
The facts set forth in Greenline’s Amended Complaint demonstrate that
GIT Media’s 2003 registration of <certifix.com> could not have
been in bad faith. GIT Media registered
<certifix.com> on July 22, 2003.
Attached as Annex A to the Amended Complaint is Greenline’s trademark
registration certificate which shows (i) Greenline did not begin using the
CERTIFIX mark until June 1, 2004; (ii) Greenline did not seek registration
until June 1, 2004; and (iii) Greenline was not granted registration until July
12, 2005. GIT Media registered <certifix.com>
more than a year before Greenline began using the CERTIFIX mark.
Pursuant to Rule 15(e), GIT Media requests an express finding that
Greenline has engaged in reverse domain name hijacking.
On July 23, 2003, GIT Media registered <certifix.com>. Prior to registering the domain name, GIT
Media’s principal, Tim Griffin, conducted a search of the United States Patent
and Trademark Office’s database to confirm the absence of trademark
registrations or pending applications covering the CERTIFIX mark.
GIT Media not only registered the domain name before Greenline began
using the site but GIT Media also developed the site before Greenline adopted
the mark. GIT Media registered <certifix.com>
and developed a website devoted to certified (“certi”) automotive repair
(“fix”); hence the name “certifix.”
While GIT Media uses the term “certifix” in a descriptive nature to
refer to certified auto repairs, Greenline’s use of the mark, and its
registration, are limited to an entirely different field; Computer software
used to test and simulate commodities and equities electronic trading
applications using a web-based interface.
Greenline does not allege, nor could it allege, that GIT Media has ever
used the domain name to market, promote or sell goods similar to Greenline’s.
GIT Media selected a descriptive domain name describing the goods and
services that could be sold under the domain name. The first to register such names obtain legitimate rights to use
them.
Before any notice to GIT Media of the dispute, GIT Media registered the
domain name and began developing a site for use in connection with certified
automobile repair services.
GIT Media has never offered the domain name for sale to any competitor
of Greenline. Greenline makes no
contrary allegations.
C. Additional Submissions
Complainant
Griffin argues that Greenline did not begin using its federally
registered CERTIFIX mark until June 1, 2004.
This is not true. Greenline has
been using its CERTIFIX mark since 2001, which is at least a year and a half
prior to when Griffin registered the domain name at issue. Attached to the submission as Annex I is a
copy of a proposed License Agreement with an effective date of December 18,
2002 that was sent to the New York Mercantile Exchange.
Greenline’s application to register its CERTIFIX mark was filed by a
trademark novice who correctly identified the date of first use as “at least as
early as June 1, 2004.”
Griffin did in fact offer to sell the <certifix.com>
domain name to Greenline.
Griffin’s assertion that the term “certifix” is descriptive of
certified automobile services is misguided.
Griffin has no intention of using the domain name to offer any goods or
services.
Griffin has no legitimate interests in the <certifix.com> domain
name.
The domain name was registered in bad faith because it was acquired
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to any entity (including Greenline) that is willing to
pay the unreasonable price demanded by Griffin.
The domain name was registered in bad faith because it was acquired to
prevent a legitimate owner of the CERTIFIX trademark from reflecting the mark
in a corresponding domain name and the owner has engaged in a pattern of such
conduct.
Respondent
Both Greenline’s federal trademark registration and the declaration
provided to the United States Patent Office in support of that registration
clearly state that Greenline first used the CERTIFIX mark on June 1, 2004.
The Panel should not give any weight to the 2002 proposed license
agreement.
GIT Media did not know of Greenline’s interest in the mark because
Greenline did not begin using the mark until nearly a year later, June 1, 2004.
GIT Media never offered to sell the domain name to Greenline.
Counsel’s settlement offers in May 2006 are not evidence that the
domain name was registered with the purpose of selling it to Greenline.
Greenline’s argument misses the significance of the GIT Media
explanation as it applies to a finding of bad faith.
The Policy does not require evidence of actual use; making preparations
to use the domain name are sufficient.
FINDINGS
For the reasons set forth below, the Panel finds Complainant has not proven that the domain name 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.
Respondent registered the disputed domain name on July 22, 2003. Complainant’s CERTIFIX mark was
registered on July 12, 2005, with a filing date of June 1, 2004 and a first use
date of June 1, 2004 listed on the trademark registration. Complainant used the same dates in the
Complaint. Complainant’s attempt in its additional submission to establish an
earlier date of first use cannot overcome the date on the trademark
registration and in the amended complaint.
Thus, Respondent’s registration of the <certifix.com> domain
name predates Complainant’s rights in the CERTIFIX mark.
Accordingly, the Panel finds that Complainant has failed to satisfy the
requirements of Policy ¶ 4(a)(i). See
Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding
that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate
Respondent’s registration . . . of the domain name”); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003)
(noting that as the respondent’s registration of the <razorbox.com>
domain name predated the complainant’s alleged rights (the respondent
registered the disputed domain name more than two years prior to the
complainant’s stated first use in commerce) the complainant did not have
standing to bring a claim under the UDRP).
The Panel finds this element has not been satisfied.
The Panel finds that Respondent does have rights or legitimate interests in the <certifix.com> since Respondent’s registration of the disputed domain name predates Complainant’s rights in the CERTIFIX mark. 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 Complainant); see also Warm Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).
The Panel finds this element has not been satisfied.
The Panel finds that Respondent did not register or use the <certifix.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii), since Respondent’s registration of the disputed domain name predates Complainant’s rights in the CERTIFIX mark. 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 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 Complainant’s use of the mark); 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).
The Panel finds this element has not been satisfied.
The Panel finds that reverse domain name
hijacking has not been proven.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 28, 2006
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