National Arbitration Forum




Datalyst LLC v. Lee Estes

Claim Number: FA0704000954109



Complainant is Datalyst LLC (“Complainant”), represented by James J. Interlandi, 1759 W. Wellington, Suite 4000, Chicago, IL 60657.  Respondent is Lee Estes (“Respondent”), PO Box 7851, Van Nuys, CA 91409-7851.



The domain names at issue are <> and <>, registered with Go Daddy Software, Inc.



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.


David E. Sorkin as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 9, 2007.


On April 5, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <> and <> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of both names.  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 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 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 and by e-mail.


A timely Response was received and determined to be complete on May 2, 2007.


Complainant filed an Additional Submission on May 4, 2007, pursuant to the Forum’s Supplemental Rule 7.  Notwithstanding that rule, under Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), discretion to request such supplementation rests solely with the Panel.  In general, a Panel should consider additional submissions only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006).  In this case, the Panel finds no exceptional circumstances to be present, and therefore declines to consider the Additional Submission.


On May 8, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.



Complainant requests that the disputed domain names be transferred from Respondent to Complainant.



A. Complainant

Complainant alleges that it has trademark rights in the word mark DATALYST.  Complainant has an application for registration of this mark pending before the U.S. Patent & Trademark Office, and claims to have common law rights in this mark.  Complainant alleges that its rights to the DATALYST mark arise from its use of the mark dating back to September 1, 2003.


Complainant contends that the disputed domain names <> and <> are identical to Complainant’s DATALYST mark, that Respondent has no rights or legitimate interests in these domain names, and that Respondent registered and is using the domain names in bad faith.  In support of its bad faith claim, Complainant alleges that Respondent is engaged in the business of buying and selling domain names; that Respondent is attempting to profit by using the disputed domain names to promote goods and services that compete with those of Complainant; that Respondent has indicated a willingness to sell the domain names at a high price; and that Respondent has prevented Complainant from registering a domain name incorporating its mark and has engaged in a pattern of such behavior.


B. Respondent

Respondent contends, inter alia, that it did not register the disputed domain names in bad faith, and asserts that it was the first to use the name “datalyst.”  Respondent states that it registered <> on or about August 19, 2002, and <> on or about June 30, 2003, and that both of these dates predate Complainant’s claimed first use of its DATALYST mark.  Respondent requests that the Panel deny the Complaint and find that Complainant has engaged in reverse domain name hijacking.



The Panel finds that the disputed domain names were not registered in bad faith.  The Panel further finds that the Complaint in this proceeding was brought in bad faith in an attempt at reverse domain name hijacking, and constitutes an abuse of this administrative proceeding.


Because the Panel’s finding as to bad faith registration is dispositive of the present matter, the Panel declines to enter findings as to the other elements set forth in Paragraph 4(a) of the Policy.



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.


Because the Panel’s finding as to the third element is dispositive, the Panel declines to address the questions of identicality or similarity to a trademark and rights or legitimate interests.


Registration and Use in Bad Faith


The undisputed chronology of the case makes it clear that the disputed domain names were not and could not have been registered in bad faith.  The disputed domain names were registered in August 2002 and June 2003, while Complainant did not adopt its trademark until September 2003.  Under Paragraph 4(b)(iv) of the Policy, subsequent bad faith use of a domain name may, in appropriate circumstances, be probative of a domain name registrant’s intent at the time of the initial registration of the domain name.  Such is clearly not the case here, however, because in August 2002 and June 2003 Respondent could not possibly have harbored a bad faith intent in regard to a trademark that did not even exist until September 2003.  See, e.g., Motley Fool v. Domain Works, Inc., D2006-1625 (WIPO Mar. 20, 2007); Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001).


Reverse Domain Name Hijacking


A finding of Reverse Domain Name Hijacking may be made if “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith.”  Proto Software, Inc. v. Vertical Axis, Inc., D2006-0905 (WIPO Oct. 10, 2006) (quoting Futureworld Consultancy (Pty) Ltd. v. Online Advice, D2003-0297 (WIPO July 18, 2003)).  Where the domain name registration predates the very existence of the trademark, and Complainant is aware of this fact but nonetheless brings a Complaint under the Policy, a Panel may appropriately find that the Complaint has been brought in bad faith and constitutes an abuse of the administrative proceeding.  See, e.g., NetDeposit, Inc. v., D2003-0365 (WIPO July 22, 2003).  Such are the circumstances here.  Complainant acknowledges having consulted the registration records for the disputed domain names prior to filing the Complaint, and therefore must have appreciated the utter impossibility of proving that Respondent registered the domain names for reasons relating in any way to Complainant or its trademark.  The Panel finds that Complainant has brought the Complaint in this proceeding in bad faith in an attempt at reverse domain name hijacking, and that Complainant’s actions in so doing constitute an abuse of this administrative proceeding.



Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and finds that the Complainant has engaged in reverse domain name hijacking.






David E. Sorkin, Panelist
Dated:  May 9, 2007





Following the submission of the Panel’s decision in this matter to the Forum, an Additional Submission from Respondent was received by the Forum on May 11, 2007.  Because Respondent’s Additional Submission merely responds to material in Complainant’s Additional Submission, which the Panel has already elected not to consider, the Panel similarly has elected not to consider Respondent’s Additional Submission.






David E. Sorkin, Panelist
Dated:  May 14, 2007








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