Auralog s.a. v. Innovedo
Claim Number: FA0703000945049
PARTIES
Complainant is Auralog s.a. (“Complainant”), represented by Deborah
A. Logan, of Elman Technology Law, P.C., 12
Veteran's Square,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tellmemore.com>, registered with Go Daddy
Software, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Estella S. Gold as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 23, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 26, 2007.
On March 26, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <tellmemore.com> domain name is
registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 4, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 24, 2007 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@tellmemore.com by e-mail.
A timely Response was received and determined to be complete on April 24, 2007.
On April 30, 2007, a timely Additional Submission by Complainant was
received, in accordance with Supplemental Rule 7.
On April 30, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Estella S. Gold as Panelist.
On May 7, 2007, a timely Additional Submission by Respondent was
received, in accordance with Supplemental Rule 7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant alleges that it has legal rights in the name <tellmemore.com> as follows:
a. Complainant, a France-based company,
was founded in 1987 and was one of the first companies in the world to apply
speech recognition to language learning software. Complainant developed a language learning
sofware system called Tell Me More and registered the mark Tell Me More in
several countries including
b. Complainant first used this mark in the
c. Complainant alleges that the domain name <tellmemore.com> registered by the
Respondent is identical or confusingly similar to Complainant’s registered mark
cited above;
d. Complainant alleges that Respondent has
no rights or legitimate interests in the domain name <tellmemore.com> because: (i) there is no evidence of Respondent’s use
of, or demonstrable preparations to use, the domain name in connection with any
bona fide offering of goods and/or services, except that the evidence that the
domain name was used, for at least the past two years, to misdirect Internet
users interested in Complainant’s products and services to websites offering similar
services and products in direct competition with Complainant; (ii) the domain
name is not for legitimate non-commercial or fair use.
e. Complainant alleges that the <tellmemore.com> domain name was registered
and is being used in bad faith because: (i) the domain name was registered
primarily for the purpose of selling the domain name registration for valuable
consideration in excess of the domain name registrant’s out-of-pocket costs;
(ii) the domain name has been inactive for more than five years; (iii)
Respondent used the domain name to redirect Internet users to Complainant’s
competitors’ websites.
B. Respondent
Respondent alleges that Complainant’s UDRP Complaint is without merit
for the following reasons:
a. Respondent registered the domain name
in 1995, which was earlier than Complainant’s date of first use of the
trademark in the
b. Complainant’s trademark is a highly
stylized trademark and, therefore, there was no similarity or confusion between
the trademark and the domain name.
c. Respondent and Complainant are not in
the same or even closely related business, and, therefore, Respondent’s use of
the domain name is unlikely to cause confusion with consumers or potential
customers.
d. Respondent, by itself or through its
affiliates, has been using the domain name since 1995 for staging of websites
on subdomains and subfolders, e-mail services, list servers, and file transfer
protocol services.
e. During the time Respondent was not
using the domain name to stage websites for its customers, Respondent would
deactivate the web services and the service provider GoDaddy.com, by its
standard practice, and would post a “free parking page,” on which GoDaddy.com
would place links, search engines and/or advertisement.
f. Respondent did not attempt to sell the
domain name in excess of Respondent’s out-of-pocket costs because: (1) the
communications between Complainant and Respondent regarding the sale of the
domain name was initiated by Complainant, not Respondent; (2) Respondent
decided to sell the domain name along with other five similar domain names
through the auction site Sedo.com as a result of its business reassessment and
redirection; (3) Respondent offered to sell the domain name at the amount of
$1,200,000 for the sole purpose of terminating the auction sale through
Sedo.com in accordance with Sedo.com’s advice on how to terminate an auction
sale.
C. Additional Submissions
Both Complainant and
Respondent through their Additional Submissions further clarify their positions
and arguments.
FINDINGS
The Panelist finds the following facts:
1. The
domain name <tellmemore.com> was first registered
on August 22, 1995 by Rosetta Group, an affiliate of Respondent through Shereef
Moustafa’s common control, and was transferred to Respondent in 2002 (the “2002
Transfer”).
2. Prior
to the 2002 Transfer, the domain name was used, at least periodically, for
website development services including e-mail services; nonetheless, Respondent
had not actively used the domain name since the 2002 Transfer and as a result
of Respondent’s non-use, Godaddy.com had been parking websites offering similar
services and products in direct competition with Complainant’s business.
3. In
2004, Respondent was approached by Complainant for the sale of the domain name
and Respondent rejected Complainant’s final offer at the amount of $5,000, and in 2006, Respondent attempted to sell the domain name
along with five other domain names through the auction site Sedo.com. Respondent rejected Complainent’s anonymous
offer at the amount of $20,000 by counteroffering at the amount of $1,200,000,
through which Respondent’s real intention was to terminate the auction sale at
Sedo.com.
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 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;
(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.
This Panel concludes that the disputed domain
name is identical to Complainant’s mark.
This is so because the <tellmemore.com> domain name incorporates Complainant’s TELL ME MORE
mark in its entirety and merely eliminates the spaces between terms of the mark
and adds the generic top-level domain “.com.”
See Trip Network Inc. v. Alviera,
FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (conclusing that the addition of
“.com,” “.net,” or “.org” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that
eliminating the space between terms of a mark still rendered the domain name
identical to the complainant’s mark).
Respondent repeatedly emphasized
that it registered the domain name two years before Complainant began using the
mark and three years before Complainant obtained its first trademark
registration. Complainant, on the other
hand, argues that Respondent’s registration date for the domain name should be
the date when the 2002 Transfer occurred. However, this Panel concludes that under
Policy ¶ 4(a)(i), Complainant’s trademark rights need not predate the
registration date of the domain name in dispute. See Javacool Software Dev.,
LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007).
Respondent argues that it has been using the
domain name for staging of websites on subdomains and subfolders, e-mail
services, list servers, and file transfer protocol services since 1995. This Panel finds that prior to the 2002
Transfer, Respondent did show evidence of using the domain name at least for
e-mail services. However, this Panel
finds that after the 2002 Transfer, the domain name was inactive and Respondent’s
use of the domain name is sporadic and minimal at most. Indeed, due to the inactivity of the domain
name, the service provider Godaddy.com parked websites offering similar
services and products in direct competition with Complainant’s business.
In light of the foregoing, this Panel
concludes that Respondent’s non-use of the domain name for the past several
years does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See VICORP Rests., Inc. v.
Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding
that the respondent’s failure to use the disputed domain name for several years
was not a bona fide offering of goods or services). Further, the fact that Respondent’s domain
name was used to park websites offering similar services and products in
direct competition with Complainant’s business does not grant Respondent rights
or legitimate interests in the domain name either. See Charles Letts & Co Ltd. v. Citipublications, FA 692150
(Nat. Arb. Forum Jul. 17, 2006) (finding that the respondent’s parking
of a domain name containing the complainant’s mark for the respondent’s
commercial gain did not satisfy Policy ¶ 4(c)(i)
or Policy ¶ 4(c)(iii)).
Complainant argues that Respondent registered
and used the domain name in bad faith because: (1) Respondent tried to sell the
domain name at a price far in excess of its out-of-pocket registration costs;
and (2) the domain name was used to park websites offering similar services and
products in direct competition with Complainant’s business. Respondent first argues that the decision to
sell the domain name was a business decision and the $1,200,000 counteroffer
was merely given to terminate its auction sale at Sedo.com. Nonetheless, this Panel finds that Respondent
cannot refute the fact that it rejected the anonymous offer from Complainant at
the amount of $20,000, which is certainly far in excess of its out-of-pocket
registration costs. Further, Respondent
did not reject this $20,000 offer for the purpose of further using the domain
name for the legitimate reasons; rather, it simply attempts to sell the domain
name at presumably a higher price through other means than Sedo.com by giving a
counteroffer at the amount of $1,200,000.
Therefore, this Panel concludes that Respondent’s attempt to sell the
domain name at a price higher than $20,000 and Respondent’s continuous non-use
of the domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).
See Matmut v. Tweed,
D2000-1183 (WIPO Nov. 27. 2000) (finding bad faith under Policy ¶ 4(b)(i) where
the Respondent stated in communication with the Complainant that it would be
ready to sell the domain name for $10,000).
With regard to parking websites offering similar services and
products in direct competition with Complainant’s business, Respondent argues
that it had no control or responsibility for that because it is the service provider
GoDaddy.com who independently did that.
This Panel finds this argument is without merit. Rather, this Panel
concludes that the combination of Respondent’s passive holding of the domain
name, transparent attempt to sell the domain name, and indifference to
GoDaddy.com’s parking Complainant’s competitors’ websites sufficient to
establish the bad faith registration and use of the domain name. See Ideal Products, LLC v. Manila Industries, Inc., FA 819490 (Nov.
30, 2006) (“Respondent cannot duck its responsibility for the site by saying
that others choose the content. Passive
holding of a domain name is neither evidence of or
against bad faith, and must be evaluated in light of all of the circumstances
relating to the domain name.”).
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 <tellmemore.com> domain name be TRANSFERRED
from Respondent to Complainant.
Estella S. Gold Panelist
Dated: May 14, 2007
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