3DCafe, Inc. v. 3d Cafe.com
Claim Number: FA1010001351489
Complainant is 3DCafe, Inc. (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould, P.C., Minnesota, USA. Respondent is 3dCafe.com (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3dcafe.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Sir Ian Barker, Ms. Diane Cabell, Hon. Paul A. Dorf (ret’d).
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2010; the National Arbitration Forum received payment on October 9, 2010.
On October 11, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <3dcafe.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on October 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A deficient Response was received on November 17, 2010.
Complainant’s Additional Submission was timely received on November 17, 2010, in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on November 22, 2010, in compliance with Supplemental Rule 7.
On December 8, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker, Ms. Diane Cabell and Hon. Paul A. Dorf (ret’d) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is a Minnesota corporation. It claims that its predecessor in interest first used a common law trademark for 3DCAFE in 1991. The mark was for computer-aided design and manufacturing products and services. The Complainant’s predecessor offered and marketed these products, originally using a bulletin board system which allowed customers to dial-in for the purposes of downloading or sharing 3D models, templates and other computer materials. In 1993, there was a significant following for these products among the, then, relatively small 3D CAD/CAM modeling industry. In 1995 the 3DCAFE bulletin board was nearly out of capacity to handle additional uses, since it had been restricted by the number of modems or telephone lines connected to the bulletin board.
In November 1995, the predecessor in interest began developing a beta version of the website which was not limited in capacity and could be accessed by many more customers. Since the beta launch, the website has served thousands of customers and has been continually marketed and improved.
During the 1990s, the customer base was concentrated in the Midwest with 85% of the customers residing in Minnesota, Wisconsin, Iowa and South Dakota. The remaining customers were scattered throughout the USA and internationally.
The Respondent is located in Wisconsin in the centre of the heavy concentration of the Complainant’s customers.
The Complainant does not have a registered trademark but it invented the disputed domain name. A trademark search found no evidence of any other party having used the mark. The Complainant has invested money in developing and marketing its products under this common law mark and has developed substantial goodwill customer loyalty.
The disputed domain name was first registered in November 21, 1996 but no relevant intellectual property rights filings have been made.
The Respondent has no legitimate registered or common law trademarks for the disputed domain name. The Complainant has not authorized or licensed the Respondent to use the mark for any purpose. The domain name is identical to the Complainant’s mark. It was registered primarily for the purposes of commercial gain and for purposefully diverting to the Respondent’s website customers looking to purchase 3DCAFE products and services.
The products and services offered by the Respondent on its website are virtually identical to those offered by the Complainant. The Respondent’s use of the disputed domain name trades upon the goodwill associated with the Complainant’s mark. The Respondent’s use of the domain name tricks consumers into visiting its website by offering competing products and services and does not constitute bona fide offering of goods.
The Respondent’s intent in registering the disputed domain name was to divert traffic away from the Complainant and not legitimately to use the name in connection with the sale of the Respondent’s goods.
The Respondent registered and is using the disputed domain name in bad faith because it diverts traffic to a website offering competing products. The Respondent registered the disputed domain name knowing of the Complainant’s rights in the common law trademark. Bad faith can be inferred from the Respondent’s choice of designation which it knew to be similar to the Complainant’s trademark. Moreover the Respondent registered the disputed domain name in order to trade on the Complainant’s goodwill and to create a likelihood of confusion as to the source of the website. That, together with evidence of constructive knowledge, demonstrates the Respondent’s bad faith.
The response is a submitted document over the 10MB limit allowed and without the Annexes separated from the response. Forum Supplemental Rules 5(c)(i) and (c)(iv) have not been followed.
However the Panel considers that, given the technical nature of the breach and the need to respond the real dispute between the parties, this response should be allowed. However, the Panel notes that the response is overlong and frequently repetitive and inflammatory in its content.
The Respondent claims that there is no basis for transferring the disputed domain name since the Respondent is the lawful registrant, having purchased it from its prior owner and founder Platinum Pictures Multimedia Inc (PPM) in June 2004 PPM had used the disputed domain name to operate a popular website, which began operations in 1996 when the disputed domain name was first registered. The Respondent is the true holder of the common law trademark for the term.
Complainant was incorporated on October 4, 2010, five days before the filing of the Complaint on October 9, 2010. This is demonstrated by a copy of the relevant record from the Minnesota Secretary of State. Complainant’s failure to advise the Panel of this fact is “extremely deceptive” and “appears to be a naked attempt to create a perceived association between the Complainant and this term where none exists”.
The Claimant does not reveal the identity of its alleged predecessor(s). The Respondent claims the predecessor was Nielsen Enterprises Inc, aka NEI, a distributor of surfcam 3D CAD/CAM software. The NEI logo is displayed with the surfcam logo on a letter which purports to document the common law trademark use in 1991. This letter shows a design for a 3DCAFE website created recently and hosted on the domain NEIL.com which is owned and operated by NEI.
There is no evidence to support the claim for a common law trademark claim. 3DCAFE is a descriptive term for an “online café” relating to 3D technology. The Complainant has failed to prove that the term has gained the necessary secondary meaning, i.e. that consumers identify 3DCAFE with the Complainant as the sole source of the mark. The only evidence of any trademark use is the 19-year old, manually-typed letter from NEI to an individual customer about an antiquated service known as a bulletin board system. This evidence does not prove any measurable trademark use of the term. In the 1991 letter, there is no evidence of any use of the Internet with the term 3DCAFE, let alone any exclusive association of the term with Complainant.
Because the Complainant had no common law mark the Respondent could not be found to have constructive notice of one when the disputed domain name was registered. There is no proof of actual notice.
The Respondent has used and is using the disputed domain name in connection with a bona fide offering of services. PPM was founded by a Mr. Raymond Lueders in 1996. The present Respondent purchased the 3DCAFE site from PPM in May 2004, at a time when the site had 100 million visitors.
The Respondent operated the site successfully for more than five years. In August 2009, the site was a victim of a severe hacking attack which corrupted all the Respondent’s files and compromised the web service of the website host which required the Respondent to shut down the site for several months. The site was re-launched on October 8, 2010.
Registration of the disputed domain name was made entirely in good faith. There is no basis for interim bad faith registration through either constructive or active knowledge of the mark.
The Complainant has waited to bring this action 14 years from the date the disputed domain name was first registered and six years after it was acquired by the Respondent. The Complainant’s long delay in taking action raises the inference that the Complainant did not truly believe it had a meritorious case against the Respondent. This is a fraudulent attempt to reverse-highjack a desirable domain name. The Panel is asked to issue a ruling that the Complainant is engaged in reverse domain name highjacking.
The Response is supported by a declaration made under penalty by a Mr. Jaques Hiener, the owner of the Respondent. He details how he first met Mr. Lueders in 2000 and discussed purchase from PPL of its business. He purchased it on May 17, 2004 under an agreement of that date which was not satisfied until September 20, 2007.
He testifies to a server hack which interrupted the computer files. He asserts that he did not acquire the disputed domain name with the Complainant’s trademark in mind. He had no knowledge of the Complainant’s website, its business name or any mark when the Respondent acquired the disputed domain name. It was not acquired with for the intent to sell to the Complainant, to disrupt the Complainant’s business or to confuse customers seeking to find the Complainant’s website. The Respondent did not register the disputed domain name to prevent the Complainant from owning a domain incorporating its trademark.
C. Claimant’s Additional Submissions
The Claimant does not deny that it was incorporated only days before filing the Complaint. Indeed, it does not refer to this fact at all. Nor does it give any details of how it acquired any rights from whomsoever had been using the common law mark prior to the incorporation of the Complainant.
The Complainant asserts again that it (presumably its predecessor in interest) has been using the disputed domain name as a mark since 1991 and has since invested substantial sums of money directly in developing and marketing products and services under that mark with substantial customer loyalty.
There is no evidence supporting the Respondent’s claim to any common law mark.
The Complainant criticized the evidence relating to the sale agreement between PPM and the Respondent. Mr. Hiener’s declaration is “not credible”. An abandoned trademark application filed by PPM, lists November 25, 1995 as the date of first use of the Mark and November 21, 1996 as the date of first use of the mark in commerce. This is contrary to the 1989 allegation of first use of the mark claimed by Mr. Lueders, referred to by Mr. Hiener in his declaration.
The Complainant continues to act in good faith and has not engaged in reverse domain name highjacking prior to filing the Complaint. It attempted to contact the Respondent at Wisconsin Dells in the state of Wisconsin. On September 16, 2010 the Complainant also sent the same letter to PPM but both letters were returned undelivered.
The Respondent’s registration information was therefore was inaccurate. A statement had been posted for over a year at the website accessed by the disputed domain name stating “We are performing system maintenance and will return on 8.25.09” plus an entirely blank page would leave anyone to believe that the website had been abandoned.
As to bad faith, that Respondent has given no proof of its claim to have re-launched its website. The Complainant showed no content on the website as at 8 October 2010.
The reality is the Respondent re-launched its website immediately it received notice of the filed complaint which reflects its bad faith. The Respondent did not acknowledge the Complainant’s voicemail regarding a possible settlement.
D. Respondent’s Additional Submissions
The Complainant has not produced evidence to substantiate a common law mark other than a 19 year old letter. It did not include a signed declaration in support of the Complaint and did not address the fact that archived web creators of the Complainant’s predecessor showed no use by the Complainant of the mark 3DCAFE in the past 19 years.
Mr. Hiener’s declaration is credible. The issue for the Panel to decide is not whether the Respondent has a common law trademark but whether the Complainant does. Correspondence was not addressed to Mr. Hiener who was listed with the Registrar as the administrative contact but to Mr. Lueder who was listed as the technical contact. Had the correspondence been addressed to Mr. Hiener he would have received it.
The fact that the website was re-launched around the time the Complaint was filed was coincidental. Once legitimate interest has been established under the Policy, the subsequent different use of the disputed domain name or termination of use does not effect the determination of legitimacy.
(a) The Complainant has not proved that it has a mark in which it has rights.
(b) The Complainant has been guilty of reverse domain name hijacking.
Paragraph 15(a) of 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; and
(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.
Although the Complainant does not own a registered trademark it could still rely on a common law trademark to prove it has rights in a mark it allegedly being infringed by the disputed domain name.
The Complainant must fail for two reasons. First, it is clear that it was incorporated only days before the Complaint was filed. Therefore its only right to claim an interest in any mark, whether common law or registered depends on proof that the previous owner of the mark had assigned it to the Complainant.
The Complainant has failed conspicuously to do this. It has not named the entity or entities which allegedly traded under the mark since 1991. The Respondent suggested an identity but it is not for the Respondent to prove this.
The Complainant made no comment on the Respondent’s suggestion that it ought to have exhibited an assignment to it of the rights from the entity which owned the common law mark. The Panel should have received a copy of a signed legal document assigning these rights.
Assignments of or licenses to use are common in the case of registered trademarks. No doubt an unregistered mark could be capable of assignment. There is just no proof that the present Complainant has any rights in any trademark. It had only been in business for a few days at the date of filing the Complaint.
Secondly, the evidence offered by the Complainant falls far short of the fairly high standard for establishing a common law mark. Assuming that it did have some right as an assignee to an interest in a common law mark if any, the fact that it may have had a presence on the Internet since 1991 is not enough. The one document made 19 years ago is hardly sufficient to provide evidence of a common law mark.
Weatherford International Inc v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) is one case that holds that simply operating under a business name does no per se constitute secondary source identification sufficient to warrant a finding of a common law mark.
Moreover, the Overview of WIPO Panel Views on Selected UDRP questions at paragraph 1.7 puts the test thus:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes links and amount of sales under the mark and the nature of extent of advertising, consumer surveys and media recognition. The fact that secondary meaning may exist only in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even where the complainant is based in a civil law jurisdiction.”
Various Panels under the Policy, both NAF and WIPO, have accepted these criteria.
In the Panel’s view, the Complainant has not satisfied Paragraph 4(a)(i) of the Policy because it has failed to establish rights in any mark.
Accordingly, the Panel declines to analyse the other two elements of the Policy. See Creative Kerb v. Edgetech Int’l Pty Ltd, FA116765 (Nat. Arb. Forum Sept. 20, 2002) and Hugo Daniel Bearbaca Beginha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006).
However, the Panel observes that, even if it had proceeded to consider the other limbs of Paragraph 4(a), the Complainant would have failed on the third limb. There is insufficient evidence to enable the Panel to infer that the disputed domain name was registered in bad faith.
This is another case where a complainant has slept on its rights. It would be extremely difficult to infer, after years of inaction by the Complainant, that a respondent registering a domain name 14 or even 6 years previously would know of their use by a company operating in another state.
The date at which bad faith registration should be assessed here is the date when the present Respondent acquired the disputed domain name in 2004 and not when it was first registered in 1996.
The Complainant fails to appreciate the need to show that the reputation of the mark was such in 2004 that the Respondent should have known about its alleged common law mark at the date of registration of the disputed domain name.
The equitable doctrine of laches need play no part in the Panel’s assessment. Nevertheless, the longer a complainant delays the seeking of relief under the Policy, the more difficult it is to confer bad faith registration.
In New York Times Co. v. Name Administration Inc. (BVI), FA1349045 (Nat. Arb. Forum Nov. 17, 2010) a three-person panel held that laches could provide a defense. The Panel does not need to consider whether it agrees with that decision since it is quite clear that the Complainant has not established any common law mark.
The Respondent claims that the Complainant has acted in bad faith by initiating this dispute and that it should have known that it was unable to prove that the Respondent lacked legitimate rights or interests.
In Labrada Body Building Nutrition Inc. v Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004), the complainant was held guilty of reverse domain name hijacking where it used “the Policy as a tool to simple wrest the disputed domain name, in spite of its knowledge that the complainant was not entitled to that name and hence had no colourable claim under the Policy”.
Not every complainant who fails to satisfy the burden under the Policy should receive a finding of reverse domain name hijacking. There should normally be some evidence or inference of bad faith on the complainant’s part.
In the present circumstances, the lack of a trademark, the delay by the Complainant and the fact that the Complainant itself showed no evidence of any right to any common law rights to a mark, all combine to infer that the Complainant acted in bad faith. The Panel therefore makes a finding of reverse domain name hijacking.
The Complainant 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 <3dcafe.com> domain name REMAIN WITH Respondent.
The Respondent’s application for a declaration of reverse domain name hijacking by the Complainant is granted.
Hon. Sir Ian Barker
Ms. Diane Cabell, Hon. Paul A Dorf (ret’d) Panelists
Dated: December 20, 2010
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