Emprise
Financial Corporation v. Emprise Group
Claim Number: FA0106000097356
PARTIES
The Complainant is Emprise Financial Corporation, Wichita, KS, USA (“Complainant”) represented by Peter M. de Jonge, of Thorpe, North & Western, LLP. The Respondent is Emprise Group, Champaign, IL, USA (“Respondent”) represented by Aaron Freeman.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is "emprise.net," registered with Network Solutions.
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.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 4, 2001; the Forum received a hard copy of the Complaint on June 13, 2001.
On June 5, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "emprise.net" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 June 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 5, 2001 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@emprise.net by e-mail.
A timely response was received and determined to be complete on July 5, 2001.
On
July 11, 2001, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum
appointed Bruce E. Meyerson as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has used the mark "Emprise" since 1998 in connection with "banking services, computer software and other things." In additon, Complainant has produced evidence that it has registered with the United States Patent and Trademark Office numerous trademarks for the word "Emprise" for such items as automobile windshield sunshades, plastic key chains, canvas bags, sweat shirts and golf balls. Complainant asserts that has a result of these uses it has acquired and developed significant ownership interests in this mark. Complainant states that Respondent's domain name is identical to its mark and that because Respondent has not used the domain name, it has no rights or legitimate interests in it.
B. Respondent
Respondent contends that because the word "Emprise" is a common word, Complainant must establish that the word has a strong secondary meaning. Respondent contends that no such proof as been adduced. Respondent, who works as an independent network engineer and consultant, contends that although he has not used the domain name for a web site, he has used the name for e-mail, file transfer and other communication applications. Respondent claims that he has used the domain name for such purposes for three years prior to the initiation of this dispute.
FINDINGS
Respondent has used the domain name for e-mail, file transfer, Usenet (NNTP News) and other communication applications. Other panels have found such uses to be sufficient to demonstrate a legitimate interest or right in a domain name. Accordingly, the relief requested by Complaint must be denied.
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.
In order to prevail, a complaining party must prove each of the three elements set forth in Policy 4(a). Because the Complainant has not established that Respondent has no rights or legitimate interests in the domain name, it is not necessary to consider the remaining two elements.
Complainant asserts that Respondent lacks a legitimate interest in the domain name because he is not using it as a web site. Respondent, who works as an independent network engineer and consultant, has demonstrated with evidence that, although he has not used the domain name for a web site, he has used the name for e-mail, file transfer, Usenet (NNTP News) and other communication applications. Other panels have found such uses to be sufficient to a defeat a claim such has been made by Complainant.
In Zero Int’l Holding GmbH & Co. Kommandigesellschaft v. Beyonet Services, D2000-0161 (WIPO May 12, 2000), the panel rejected the contention that the registration of a domain name only to be used for e-mail and file transfer operations constituted bad faith. In that case, like this one, the respondent was a network engineer and used the domain name personally and in connection with his professional activities.
Five months later, another panel reached the same conclusion. Magic Software Enter. Ltd. v. Evergreen Tech. Corp., D2000-0746 (WIPO Oct. 4, 2000). In Magic Software, the panel also rejected the complaining party's argument that legitimate interests in a domain name "can only stem from an interest in the use of the domain name to resolve to a web site." Because, according to the panel, the Internet has had a "long standing and widespread use of domain names as electronic addresses" the panel found that the complainant failed to show that the respondent had no legitimate interests or rights in the domain name.
These decisions are directly applicable here, and defeat the Complainant's complaint.
DECISION
Pursuant to the foregoing, Complainant's request to transfer to it the domain name "emprise.net" is hereby denied.
Bruce E. Meyerson, Panelist
Dated: July 24, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page