National Arbitration Forum
DECISION
H5 Technologies, Inc. v. IQ Management
Corporation
Claim Number: FA0603000652832
PARTIES
Complainant is H5 Technologies, Inc. (“Complainant”),
represented by Raj Barot, 55 Second Street, 2nd Floor, San
Francisco, CA 94105. Respondent is IQ Management Corporation (“Respondent”),
represented by John Berryhill,
4 West Front Street, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <h5.com
>, registered with Tucows, Inc.
PANEL
The undersigned certify that each 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.
The Panelists include Hon. Carolyn Marks Johnson
(Ret.), M. Kelly Tillery, and R. Glen Ayers, Jr. Mr. Ayers served as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on March 2, 2006; the National
Arbitration Forum received a hard copy of the Complaint on March 6, 2006.
On March 2, 2006, Tucows, Inc. confirmed by
e-mail to the National Arbitration Forum that the <h5.com> domain name is registered with Tucows, Inc. and that
the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows,
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 March 9, 2006, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 29, 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@h5.com by
e-mail.
A timely Response was received and determined to be complete on March
29, 2006.
On April 4, 2006, a timely Additional Submission
was received from Complainant and determined to be complete.
On April 7, 2006,
pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed a panel consisting of Hon.
Carolyn Marks Johnson (Ret.), M. Kelly Tillery, and R. Glen Ayers, Jr.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts
that it holds some form of trademark interest or service mark interest in the
H5 mark and complains that Respondent has registered and attempted to sell the
<h5.com> domain name.
Complainant recites that it has spent a substantial sum promoting its
services under the H5 mark, that its first use of the mark pre-dated
registration of the domain name, and that it has achieved worldwide recognition
for the mark. As support, it attaches a
Google search indicating at least “Google” recognition of its mark. Further, as evidence of an interest in the
mark, it shows a registration of the corporate name in the State of California,
various press releases, certain copyright notice, and other secondary or
supportive documents.
It does not mention, however, any registration. After a trademark application in May 2001,
there have been five extensions to show use of the mark.
Complaint goes on to assert that it has rights in the name and that
Respondent “has a history of systematically registering domain names that are
identical or confusingly similar to marks in which others have rights.” The primary argument remains, however,
Complainant’s use and registration of the mark. Complainant does hold two marks incorporating H5 with other
words.
Certainly, as Complainant points out, the domain name and the mark are
identical for purposes of the ICANN Policy.
Complainant also asserts that Respondent has no rights in the name, a
name which Respondent has allegedly merely registered for purposes of resale,
and, Complainant points out, that Respondent is not known by the H5 mark. Complainant also asserts that there has been
no use of the domain name by Respondent in connection with any bona fide
offering of goods and services.
Finally, Complainant asserts that Respondent has acted in bad faith (1)
by registering the name for purposes of resale, (2) by preventing Complainant
from registering the <h5.com> domain name for use with
Complainant’s own products, and (3) finally, by using the domain name to
redirect users for profit either from “commissions or paid-per-click referral”
fees. Exhibits are attached to
illustrate such use.
B. Respondent
Respondent’s submission
says, in fairly short order, that there is no trademark. It admits that Complainant has two
registered marks, H5 TECHNOLOGIES and H5 ATLAS. It states that neither pre-date registration of the <h5.com>
domain name. Respondent offers some
evidence that H5 and H5 TECHNOLOGIES are not registered marks and Respondent
has offered evidence that those marks may not have been used any earlier than
May 2001.
Respondent challenges the use of Google information, citing that Google
rankings can be easily manipulated.
Respondent’s
allegations of rights or interest is somewhat unique in that it asserts that it
is an Ebay affiliate, attempting to auction domain names. Finally, Respondent denies any bad faith,
arguing that its domain name was registered in March 2000 and Complainant does
not even allege to have any use prior to that date. Respondent cites case law in support of its position.
Finally, as to the alleged attempt to sell, there is a great deal of
correspondence indicating unsatisfactory negotiations between the parties.
C. Additional Submissions
The additional submission from Complainant focuses upon the “notorious
cyber squatter” reputation of the Respondent.
The additional submission by the Complainant points out the problem of
asserting that legitimate interest and an Ebay affiliation and auction system
are not necessarily the same thing.
Complainant spends a great deal of time in the Response attempting to
show that its trademark registrations and pending applications do not
necessarily reflect first use, but only reflect first use for the registration
of a mark for software applications.
Complainant also asserts that Respondent “hijacked” its mark after
Complainant had issued a press release announcing the mark and services. Complainant asserts that Respondent does not
deny that Respondent was aware of Complainant’s use of the mark before
registration. Complainant reiterates
its issues concerning Respondent’s attempt to sell the domain name for
$8,000.00, which did not reflect any rational relationship to the actual cost
of developing the name.
FINDINGS
Unfortunately for the Complainant, the Panel
can simply not find enough evidence of the existence of a mark. This is the Complainant’s burden, and the
primary allegation it must establish.
The mark asserted by Complainant has so far failed of registration due
in part to Complainant’s failure to show the date of first use of the
mark. Further, Complainant has provided
evidence of none of the indicia of the existence of common law mark which
include evidence that the mark has acquired a secondary meaning in the world of
commerce so that the mark identifies the source or identity of goods or
services. Without evidence of the
existence of the mark, the fact that the alleged mark and the domain name are
identical is irrelevant. Because
Complainant has not met its burden on the first prong of the ICANN Policy, it
cannot prevail and there is no need to address the other two issues, although
in the interest of completeness, the Panel will do so.
On other issues, Complainant has provided
evidence that it does have some rights in the name and it has provided
significant evidence that its has rights in the name while Respondent has
none.
Respondent has gone far to rebut
Complainant’s allegations, and at least one Panel member would find that
Respondent has clearly shown an interest in and legitimate use by acquiring and
holding the domain name for sale.
As to bad faith, it is not clear to the Panel
that the acquisition and later attempts to sell the domain name by Respondent
constitute bad faith. Resolution of
that portion of the dispute is difficult upon the facts provided, and the
failure of Complainant to demonstrate the existence of a trademark interest
means that there can be no factual bad faith.
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.
Identical
and/or Confusingly Similar
Respondent
registered the <h5.com> domain name before Complainant filed its
application for a trademark registration and before registration of
Complainant’s similar marks.
Although there is an application for the mark
pending, the application has not been granted, in part and apparently because
of the lack of diligence by Complainant.
Complainant ordinarily could rely upon the date of filing and not the
date of issuance. See Phoenix
Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001). Certainly, with appropriate evidence,
Complainant could assert common law rights to the H5 mark, but the evidence
presented is simply not sufficient. Cf.
I Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001). Complainant has simply provided no evidence
of long and substantial use generating secondary meaning of the H5 mark or
rights at common law. At best, it held
press conferences before Respondent registered the domain name.
Because Complainant has not prevailed on the
first prong, Complainant’s request for relief must be denied.
Rights
or Legitimate Interests
The Complainant has certainly made a prima
facie case in support of its allegations that Respondent does not have any
rights in the name and it is not known by the name. The burden shifted to Respondent to demonstrate its rights in the
names, and the Respondent has certainly provided some clear and convincing
evidence of rights in the name by the nature of its acquisition and marketing
of the domain name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant’s contentions that Respondent is
not using the <h5.com> domain name in connection with any bona
fide offering of goods or services is well established and there is no commercial
or fair use policy implication. See
Black & Decker Corp. v. Clinical Evaluations, FA, 112629 (Nat. Arb.
Forum Jun. 4, 2002).
However, Complainant does not hold any common
law mark, has itself made little use of the name, and so registration or acquisition
and sale (to at least one Panel member) creates rights in the name for
Respondent.
Registration
and Use in Bad Faith
Complainant’s
primary assertions about bad faith center around the attempted sale of the
domain name. As pointed out above,
Respondent does have an established right in the domain name in that it
registered the domain name at the time when there was no trademark. Although it is certainly not clear from the
facts, Respondent might well prevail on the bad faith issue. The requested sales price of $8,000.00
certainly does not shock the conscience.
There is no evidence of cyber squatting. And there is no evidence of any knowledge on the part of Respondent
that Complainant had asserted some sort of rights to the H5 mark prior to
registration or acquisition. See Lee
Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb.
Forum Jan. 7, 2005); see also Ode v. Intership Ltd., D2001-0074
(WIPO May 1, 2001).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <h5.com>
domain name shall NOT BE TRANSFERRED from Respondent to Complainant.
DATED: April 21, 2006
R. Glen Ayers, Jr., Panelist
Hon. Carolyn Marks Johnson (Ret.)
M. Kelly Tillery