Alphalogix, Inc. v. DNS Services d/b/a MarketPoints.com - New Media Branding Svcs.
Claim Number: FA0506000491557
Complainant is Alphalogix, Inc. (“Complainant”), 5811 McFadden Ave., Huntington Beach, CA 92649. Respondent is DNS Services d/b/a MarketPoints.com - New Media Branding Svcs. (“Respondent”), represented by Molly Kangas, of Eyetooth Branding and Trademark, 325 Bleeker Street, Ste 6-19, New York, NY 10014.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <versona.com>, registered with Enom, Inc.
The undersigned certifies that he or she 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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 6, 2005. There were no annexures.
The Complaint named Network Solutions as the Registrar. The National Arbitration Forum ascertained that the Registrar is Enom, Inc. and on June 6, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <versona.com> 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 June 9, 2005 the National Arbitration Forum notified Complainant of certain deficiencies in the Complaint, including:
“Amend complaint, to annex any documentary or other evidence and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence. ICANN Rule 3(b)(xv).”
An amended Complaint with annexed documents was received by the National Arbitration Forum electronically on June 14, 2005 and in hard copy on June 15, 2005.
On June 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 5, 2004 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 email@example.com by e-mail.
A timely Response was received electronically and determined to be complete on July 5, 2005. The hard copy was received out of time and accordingly the Response as a whole did not comply with Rule 5 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). In the interests of giving Respondent a fair opportunity to present its case pursuant to Rule 10(b), the Panel has decided to take the Response into consideration.
On July 14, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the rightful owner of the trademark for Versona under stipulation from the United States Patent and Trademark Office (“USPTO”) and the trademark has been in use on Complainant’s products for three years. The Versona trademark and logo was originally submitted to the USPTO on August 12, 2002 and approved shortly thereafter.
The disputed domain name is identical to Complainant’s trademark. Complainant held that domain name from August 12, 2002 until October 24, 2004 until it accidentally expired. Complainant attempted to re-register the domain name but Respondent had already registered it.
Respondent has no rights or legitimate interests in respect of the domain name as they [sic] do not hold the trademark nor is the domain name used. They are offering the domain name for sale and have been since their acquisition on October 24, 2004.
Respondent registered the domain name when it accidentally lapsed from Complainant and has immediately attempted to sell the domain name for profit. Complainant has made numerous attempts to contact Respondent but Respondent has never returned Complainant’s attempts at communicating in order to resolve the dispute. Complainant is commonly known as the domain name and has products under this domain name. Searching on <www.google.com> renders over 1200 responses all related to Complainant and Complainant’s products.
The amended Complaint annexes two USPTO Trademark Electronic Search System (“TESS”) printouts. The first reveals that on August 12, 2002 an application was filed by Robert McCandless Limited Liability Corporation (of the same address as Complainant) for registration of the word mark VERSONA. That application was abandoned on July 8, 2003. The second reveals that on May 18, 2005 an application was filed by Complainant to register the word mark VERSONA, based on intent to use.
Respondent is a former contractor for a naming company. It is engaged (as are dozens of others in the United States) in the business of conceiving names for new entities. Respondent registered the disputed domain name in October 2004 as a trademarkable option for clients forming newly conceived businesses. The brand was researched and logos were produced but the “versona” text string was rejected due to the registration held by Open Wave Systems, Inc. since 2001 of the <versona.net> domain name, which raised concerns of a confusingly similar use. Thereafter the disputed domain was retained as a name option for individuals, new companies or new products. Under appropriate circumstances the sale of domain names has been held to be a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy. See Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO Mar. 27, 2000).
The domain has never been available for public sale nor used to lead to a web page. Respondent never contacted Complainant regarding the domain. Respondent’s homepage says: “Eligibility to buy depends on several factors. If one seeks a name with which to build a new and non-infringing mark, one is generally eligible to buy a Marketpoints.com domain name”. To establish eligibility, Respondent’s clients are referred to its legal representatives, Eyetooth Branding & Trademark, on whose website appears the statement: “If you began mark use prior to our date of registry, you are not eligible to buy the domain.”
Complainant has no registered trademark and has submitted no evidence of common law rights. A trademark application is insufficient evidence of trademark rights.
The word “versona” is used by many parties worldwide as a business name, family name, the name of a public park and, for the purposes of Respondent’s client, a colocation facility. It is a compound of the latin “verso” (alternate) and “persona.” In 1998 Bristol-Meyers Squibb applied to the USPTO to register VERSONA as a trademark and abandoned the application in July 2000. Open Wave Systems Inc. has reserved <versona.net> since 2001 but has not used it. Over a year after the Robert McCandless Limited Liability Corporation abandoned its trademark application, Respondent registered the disputed domain name. On 17 May, 2005 Porticus Technology, the only previous offeror which sought (unsuccessfully) to buy the disputed domain name from Respondent, filed an intent to use application with the USPTO to register VERSONA as a trademark. Next day Complainant filed its own intent to use application.
Where Complainant does not possess valid common law rights to the mark VERSONA nor hold a registered US trademark and where Complainant’s only filing to date is an intent to use application filed just two weeks prior to this dispute and over seven months after Respondent registered the domain, Complainant has failed to challenge that <versona.com> was registered in good faith.
Complainant has failed to establish all the elements necessary to entitle it to relief.
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 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.
The Panel does not accept as either relevant or accurate Complainant’s statement:
“The Versona trademark and logo was originally submitted to the USPTO on August 12, 2002 and approved shortly thereafter.”
The statement is irrelevant because the application was made in a different name. There is no evidence that the then applicant, although having the same address, is the same legal person as Complainant. Further, the statement is inaccurate because the application was abandoned, a fact not disclosed in the Complaint as originally filed but apparent only in the TESS search accompanying the amended Complaint.
There is no evidence that Complainant’s trademark application of May 18, 2005 has yet proceeded to registration. Complainant’s pending trademark application does not convey any rights in the VERSONA mark to Complainant pursuant to Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004); see also ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003); see also Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001); see also Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001).
Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks. See Cedar Trade Assocs., Inc., v. Gregg Ricks, FA 93633 (Nat. Arb. Forum Feb. 25, 2000); see also Bennett Coleman & Co. Ltd. v. Steven S. Lafwani, D2000-0014 (WIPO Mar. 15, 2000); see also SeekAmerica Networks Inc. v. Tariq Masood, D2000-0131 (WIPO Apr. 20, 2000); see also Passion Group Inc. v. Usearch, Inc. AF-0250 (eResolution Aug. 10, 2000).
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent. See British Heart Found. v. Harold A Meyer III, AF-0957 (eResolution Nov. 13, 2001).
Complainant asserts that “the Trademark has been in use on our products for the period of three years.” Although there is no evidence included in the Complaint which directly supports this assertion, the Complaint claims that a search on <www.google.com> renders over 1,200 responses all related to Complainant and its products.
It has been held inappropriate for a Panelist independently to visit a web site so as to examine a party’s assertions: see Rule 15(a) and Benefitslink.com, Inc. v. Mike Haynes, FA 095164 (Nat. Arb. Forum Aug. 13, 2000).
"It is not the role of the Panel to conduct an independent investigation outside the materials submitted in the record."
Leaving aside legal research, including research into decisions under the Policy, which the Panel is clearly authorized to conduct, it could be argued that a reference in the materials submitted in the record to a website incorporates the content of the website into those materials, so that the Panel may visit that website without violating Rule 15(a). Where the website in question is that of a respondent, one good reason for the Panel not to visit it is that the Panel may have no way of knowing whether changes have been made to the site since the commencement of the proceeding. See Buendnis 90 / Die Gruenen v. RJG Eng’g Inc., D2001-1111 (WIPO Nov. 14, 2001).
It appears nevertheless to be accepted Panel practice to visit any website associated with a disputed domain name, despite the risk that the content might have been changed by the respondent since the complaint was made. See Pharmacia & Upjohn Co. v. Brainbow, Inc., D2000-1763 (WIPO Feb. 21, 2001); see also High-Class Distrib., S.r.l. v. Online Entm’t Serv., D2000-0100 (WIPO May 4, 2000); see also Terabeam Corp. v. Colin Goldman, D2001-0697 (WIPO Aug. 24, 2001); see also PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29, 2002).
Not without hesitation, the Panel has considered it appropriate in this case to conduct a Google search for ‘Versona’, mindful that the results may not necessarily reflect the situation that existed during the periods under consideration, namely the period prior to the filing of the Complaint (relevant to the question of rights in a trademark) and the period prior to Respondent’s registration of the domain name (relevant to legitimacy and bad faith). See Valve Corp. v. ValveNET, Inc., ValveNET, Inc., Charles Morrin D2005-0038 (WIPO Mar. 9, 2005).
The disputed domain name is identical to Complainant’s mark, the suffix .com being inconsequential. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Complainant has established this element of its case.
The Panel infers that Complainant has not authorized Respondent to use the VERSONA trademark nor to register the disputed domain name. Respondent is not known by that name. These circumstances establish a prima facie case against the Respondent and
the burden therefore shifts to Respondent to provide evidence of its right or legitimate interests under paragraph 4(c)of the Policy: see, e.g., Cassava Enters. Ltd., Cassava Enters. (Gibraltar) Ltd. v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States. There is no evidence that Respondent was aware of Complainant’s VERSONA common law mark when Respondent registered the domain name. Complainant’s inadvertence in allowing the domain name ‘accidentally’ to expire is no ground for attributing to Respondent knowledge of that inadvertence. So far as Respondent was concerned, the domain name was not wanted by its former holder. Had Respondent been aware of the name of that former holder, Alphalogix, Inc., Respondent would not have been alerted to the possibility that Versona was a trademark. Had Respondent searched the USPTO register, it would have found Bristol-Meyers’ and Robert McCandless Limited Liability Corporation’s abandoned applications and thereby been encouraged to conclude that VERSONA was not a registered trademark nor subject to any current application.
Respondent has shown that some logos were developed in 2004 as part of the proposed exploitation of the name Versona, before that idea was abandoned because of the current <versona.net> registration held by Open Wave Systems Inc. Albeit perfunctory, these preparations are sufficient to demonstrate Respondent’s rights and legitimate interests in the domain name for the purposes of paragraph 4(c)(i) of the Policy. See Shirmax Retail Ltd. v. CES Mktg. Group, Inc., AF-0104 (eResolution Mar. 20, 2000); see also Lumena s-ka so.o. v. Express Ventures Ltd., FA 094375 (Nat. Arb. Forum May 11, 2000); see also Royal Bank of Canada v. Xross, AF-0133 (eResolution May 19, 2000).
Complainant has not established this element of its case.
Respondent’s terms of trade make it clear that it does not sell domain names to prior users of those names as trademarks. Complainant has failed to show that Respondent registered the domain name primarily for sale to Complainant or to a competitor of Complainant. Complainant has failed to show that Respondent was aware of Complainant’s trademark. Respondent has not used the disputed domain name at all. This is not a case in which passive use may be found to be evidence of bad faith. There are no other circumstances warranting a finding of bad faith registration and use.
Complainant has failed to establish this element of its case.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: July 26, 2005
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