Spacesaver Systems, Inc. v. Storage Systems USA
Claim Number: FA1408001577402
Complainant is Spacesaver Systems, Inc. (“Complainant”), represented by Bruce E. Matter of Law Offices of Bruce E. Matter, P.C., Maryland, USA. Respondent is Storage Systems USA (“Respondent”), represented by Kevin M. Drucker of Mendelsohn, Drucker, & Dunleavy, P.C., Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spacesaversystems.com>, registered with Network Solutions, LLC.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2014; the National Arbitration Forum received payment on August 28, 2014.
On August 29, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <spacesaversystems.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 September 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2014 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 postmaster@spacesaversystems.com. Also on September 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 timely Response was received and determined to be complete on September 23, 2014.
On September 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
Complainant filed a timely Additional Submission, which was received on September 29, 2014, and found to be compliant on September 30, 2104.
On October 1, 2014, the Panel issued an Order requiring both parties to submit copies of the Spacesaver Area Contractor Agreements in effect between Spacesaver Corporation and Respondent as of October 17, 1997 and as of the date in April 2010 on which Respondent terminated its Area Contractor Agreement with Spacesaver Corporation. Responses were due from the parties on October 8, 2014. Respondent responded on October 6, 2014, Complainant on October 7, 2014.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is and since 1973 has been a Spacesaver Corporation Area Contractor in the State of Maryland under a written agreement with the Spacesaver Corporation, pursuant to which it promotes, advertises and sells shelving and storage products branded with one or more SPACESAVER marks registered in the name of and belonging to the Spacesaver Corporation. Spacesaver Corporation has authorized Complainant to bring this action and to acquire and use its SPACESAVER mark in the disputed domain name (the “Domain Name”).
Spacesaver Corporation began using the SPACESAVER mark in 1968 and registered that mark with the U.S. Patent and Trademark Office (USPTO), including a registration for the word mark SPACESAVER, Reg. No. 2,231,420, for storage and filing systems and components, registered March 16, 1999 with a first use date in 1968. It has owned the domain name spacesaver.com since October 1995 and currently uses that domain name for its website.
In 1988 Respondent incorporated under the name Spacesaver Systems of New Jersey, Inc,” and began doing business as a Spacesaver Area Contractor in New Jersey, also pursuant to a written Area Contractor Agreement with Spacesaver Corporation. It continued to act as a Spacesaver Area Contractor until April 2010, when it changed its corporate name to “Storage Systems USA, Inc.,” voluntarily terminated its Area Contractor Agreement with Spacesaver Corporation, and began selling lines of shelving and storage equipment that competed directly with the Spacesaver Corporation. It registered the Domain Name in October 1997 and used it in connection with a website for its business as a Spacesaver Area Contractor until April 2010, when it terminated its status as such and began selling competing products.
The Domain Name is confusingly similar to the SPACESAVER mark, in which Complainant has rights. It incorporates the name SPACESAVER verbatim. The addition of the descriptive term “systems” does not negate the confusing similarity between the Domain Name and the SPACESAVER mark. The Domain Name is also identical to Complainant’s own corporate name, Spacesaver Systems, Inc.
Respondent has no rights or legitimate interests in the Domain Name. It registered the Domain Name while it was a Spacesaver Area Contractor, but its status as such was created pursuant and subject to its Area Contractor Agreement with Spacesaver Corporation. That Agreement provided that Respondent would immediately stop all use of the SPACESAVER mark when its Area Contractor Agreement terminated. Any right Respondent may have had to the Domain Name when it was initially registered terminated when Respondent terminated its Area Contractor Agreement with Spacesaver Corporation. Likewise, if, when it was a Spacesaver Area contractor, Respondent was commonly known by its former corporate name, Spacesaver Systems of New Jersey, Inc., it voluntarily changed both its name and that status in April 2010. It is no longer known by the Domain Name.
The Domain Name is not currently in use with any active website. The Respondent is not making a legitimate noncommercial or fair use of it within the meaning of Policy ¶4(c)(iii).
Respondent registered and is using the Domain Name in bad faith. It was required by its Area Contractor Agreement to stop all use of the SPACESAVER mark when it terminated that agreement and its failure to do so renders both the original registration and its continuing use in bad faith. Further, it is holding it primarily for the purpose of selling, renting or otherwise transferring it to Complainant, to prevent Complainant from using it, to disrupt Complainant’s business, and to attract for commercial gain Internet users by creating a likelihood of confusion with the SPACESAVER mark.
B. Respondent
The Domain Name is not confusingly similar to any SPACESAVER mark. The mark contains only terms that are descriptive, and small differences in the Domain Name, e.g., the addition of “systems,” are sufficient to eliminate a finding of confusing similarity.
There is no evidence from the registration of Complainant’s Reg. No. 2,231,420 word mark SPACESAVER or otherwise that that mark had acquired secondary meaning prior to Respondent’s registration of the Domain Name. Complainant cannot rely on the 1968 date of first use noted in the registration.
Although the Domain Name may be confusingly similar to Complainant’s corporate name, there is no evidence that Complainant used that name as a trademark, brand, or service mark, and any similarity to Complainant’s corporate name will not support a finding for Complainant under Policy ¶4(a)(i). (“[the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.”) [Emphasis supplied]
Respondent has rights and legitimate interests in the Domain Name. It has used it continuously since 1997 as an electronic address for email messaging. It does not now apply it to any product or its packaging as part of a website, nor does it display the Domain Name in any promotional materials for any goods or services as part of a web address. Its use exclusively in connection with a long-standing email address, without intent to misleadingly divert customers from the Complainant or to tarnish any other party’s trademark, is legitimate. Also, since the term “space saver systems” is descriptive and accurately describes what Respondent actually does, this is fair use.
Respondent registered the Domain Name when it was a licensed sales representative for the Spacesaver Corporation. With the full knowledge and consent of Spacesaver Corporation, it used that name in connection with its business as such from October 1997 until April 2010. This being true, the registration was in good faith; Respondent’s later termination of the Area Contractor Agreement with Spacesaver Corporation does not change that, or somehow convert a good faith registration into one made in bad faith. Complainant must prove bad faith registration and use to prevail. It cannot possibly prevail as to the registration.
Even as to Respondent’s current use of the Domain Name (as an email address), because the words constituting the Domain Name are so descriptive, Respondent is free to register and use the name as long as there is no evidence that it is targeting Complainant’s mark. Further, while Respondent initially indicated an interest in selling the Domain Name, neither that nor its failure to respond to Complainant’s subsequent inquiry about price is evidence of bad faith.
C. Additional Submissions—Complainant
Complainant’s trademark Reg. No. 2,231,420 for the word mark SPACESAVER is incontestable, which means that it had acquired secondary meaning at the time of Complainant’s application therefor, being April 8, 1997, some six months before Respondent registered the Domain Name. In the five years preceding October 1997, when Respondent registered the Domain Name, Complainant spent on average $2 million annually promoting and advertising its SPACESAVER mark, it had over 50 Area contractors selling its products across the U.S. and in 15 foreign countries, and had approximately $53.7 million in revenue derived from the sale of goods branded with the SPACESAVER mark.
At the time Respondent registered the Domain Name it was an authorized Spacesaver Area Contractor but it had no authorization or any other permission to register the Domain Name or any other domain name using the SPACESAVER mark.
Any right or legitimate interest Respondent may have acquired in the Domain Name terminated when Respondent terminated its Area Contractor Agreement. It holds the name in a constructive trust for Spacesaver Corporation and has no right or legitimate interest in that name for itself.
Since Respondent was well aware of Spacesaver Corporation and its pre-existing rights in the SPACESAVER mark when it registered the Domain Name, its registration thereof is presumed to be in bad faith. Even if the original registration was in good faith Respondent’s termination of its relationship with Spacesaver Corporation extinguished that “good faith” registration.
D. Response to Panel Order for Production of Agreement—Respondent
Declaration of Timothy Powers, President of Respondent from 1988 through August 2014: After thorough search of the Respondent’s records it was unable to locate a copy of the Area Contractor Agreement in effect in October 1997. A copy of the 2009 Area Contractor Agreement between Spacesaver Corporation and Respondent is attached. It is believed to be the one in effect in April 2010. Respondent has no record of Spacesaver giving express written permission to use the Domain Name, but when Respondent was formed in 1988 Spacesaver Corporation encouraged Respondent and other Area Contractors to include the word “Spacesaver” in their company names, as well as to use it in their marketing and promotion. Respondent registered the Domain Name in good faith in 1997. At no time during Respondent’s time as a Spacesaver Area Contractor did Spacesaver ask it to change the Domain Name or transfer it to Spacesaver or any other company. Spacesaver Corporation never asked Respondent to transfer the Domain Name to it even after Respondent ended its business relationship with Spacesaver, only to stop using it.
Response to Panel Order for Production of Agreement—Complainant
Certificate of Robert M. Charles, Secretary of Spacesaver Corporation: After searching the corporate records of Spacesaver Corporation, the company was unable to locate a copy of Respondent’s Area Contractor Agreement in effect in 1997. A copy of the 2009 Area Contractor Agreement in effect between Spacesaver Corporation and Respondent as of April 2010 is attached.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
The Spacesaver Corporation began using the SPACESAVER mark in 1968 and registered that mark with the USPTO, including a trademark registration for the word mark SPACESAVER, Reg. No. 2,231,420, for storage and filing systems and components, registered March 16, 1999 with a first use date in 1968. This registration is incontestable; the SPACESAVER mark had acquired secondary meaning at the time of Complainant’s application therefor, being April 8, 1997, some six months before Respondent registered the disputed domain name (the “Domain Name”) in October 1997.
In the five years preceding October 1997, when Respondent registered the Domain Name, Spacesaver Corporation spent on average $2 million annually promoting and advertising its SPACESAVER mark, it had over 50 Area Contractors selling its products across the U.S. and in 15 foreign countries, and had approximately $53.7 million in revenue derived from the sale of goods branded with the SPACESAVER mark. See Complainant Exhibit 2 to Additional Submission.
Complainant is and since 1973 has been a Spacesaver Area Contractor in the State of Maryland under a written Area Contractor Agreement with the Spacesaver Corporation, pursuant to which it promotes, advertises and sells shelving and storage products branded with one or more SPACESAVER marks registered in the name of and belonging to the Spacesaver Corporation. Spacesaver Corporation has authorized Complainant to bring this action and to acquire and use its SPACESAVER mark in the Domain Name. See Complainant Exhibit 5. While Complainant may not have any outright ownership interest in the SPACESAVER mark, it has express authority from the owner thereof “to recover and use the spacesaversystems.com domain name as our authorized designee and current Spacesaver Corporation Area Contractor.” (Complainant Exhibit 5, August 4, 2014 letter from Spacesaver Corporation President to Complainant). This is sufficient to vest Complainant with rights in the SPACESAVER mark within the meaning of Policy ¶4(a)(i).
The Domain Name is confusingly similar to the SPACESAVER mark. It contains the mark verbatim, and neither its addition of the word “systems” nor the presence of the top-level domain “.com” is sufficient to distinguish it from that mark. See, Gillette Co. v. RFK Assoc., FA 492867 (Nat. Arb. Forum July 28, 2005) (addition of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s duracellbatteries.com from the complainant’s DURACELL mark). Respondent claims that the SPACESAVER mark is merely descriptive and for this reason small differences, such as adding the word “systems,” are important. However, the Panel is satisfied from the evidence of Spacesaver Corporation’s extensive use of its mark prior to Respondent’s registration of the Domain Name that the SPACESAVER mark had acquired a secondary meaning by that time and that the mark is fully protected. The addition of “systems” and the top-level domain do not distinguish it from the SPACESAVER mark for the purposes of Policy ¶4(a)(i).
The Panel therefore finds that the <spacesaversystems.com> Domain Name is identical or confusingly similar to the SPACERSAVER, in which Complainant has rights, within the meaning of Policy ¶4(a)(i).
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶4(a)(ii), the burden shifts to respondent to show it does. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the Domain Name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent lacks rights and legitimate interests in the Domain Name primarily because, although it was originally organized under the corporate name Spacesaver Systems of New Jersey, Inc., and registered the
Domain Name while it was a licensed Spacesaver Area Contractor, any right or legitimate interest it may have had in the Domain Name as a result of those circumstances terminated in April 2010, when Respondent changed its corporate name to Storage Systems USA, Inc. and terminated its Area Contractor Agreement with Spacesaver Corporation. The Area Contractor Agreement in effect at that time provides in relevant part as follows:
Upon termination of this Agreement, Area Contractor will immediately stop holding itself out as a representative of Spacesaver and will immediately stop using Spacesaver’s trade names, trademarks, and other proprietary rights. . . . If the word “Spacesaver” is part of Area Contractor’s corporate or other business name, Area Contractor will immediately change its name to delete such word or any derivative hereof. (¶VIII (h) of Agreement submitted by both parties).
Complainant also asserts that Respondent is not now commonly known by the Domain Name (having changed its corporate name), and that it is not making a legitimate non-commercial or fair use of the Domain Name in that it is not using the Domain Name in connection with any website. On these allegations and the facts offered in support of them by Complainant, it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent claims that because the term “space saver systems” is generic, or at a minimum, highly descriptive, Respondent’s use of that term in its Domain Name is a fair use. Respondent’s claim of fair use within the meaning of Policy ¶4(c)(iii) is also based upon its use of the Domain Name solely as an electronic address for email messaging, without intent to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel is not persuaded. Respondent’s Area Contractor Areement clearly and unambiguously required it to stop all use of the SPACESAVER trade names and trademark as of April 2010. It is clear that Respondent does not regard SPACESAVER as a fully protected trademark, but the Panel has found that it is. Since the Domain Name contains that mark, Respondent has no present rights to it. Any right or legitimate interest Respondent had in the Domain Name terminated as of the date that it terminated its Area Contractor Agreement with Spacesaver Corporation.
Based upon the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
In order to prevail with respect to this element of the case, Complainant must prove that the Domain Name “has been registered and is being used in bad faith.” Policy ¶4(a)(iii). On the facts of this case the Panel must determine whether Respondent registered the Domain Name in good faith in 1997 and, if so, whether its subsequent breach of its covenant in the Area Contractor Agreement to stop all use of the SPACESAVER trade names and trademark upon its termination of that agreement somehow extinguishes or negates that good faith registration. Complainant asserts that notwithstanding Respondent’s status as an authorized Spacesaver Area Contractor, selling Spacesaver branded products, Respondent was not authorized to register the Domain Name and that it acted in bad faith in doing so. Spacesaver Corporation’s corporate secretary signed a Certification submitted as Exhibit 2 to Complainant’s Annex of Supplemental Exhibits stating among other things that “the Corporation never granted any right or permission to [Respondent or any of its employees or agents] to register the domain name spacesaversystems.com or any other domain name using the SPACESAVER mark.” On the other hand, Spacesaver Corporation’s President signed a letter dated August 4, 2014 (Exhibit 5 to the Complaint) stating in part as follows: “Operating under its former name as Spacesaver Systems of new Jersy, Inc., Storage Systems USA, Inc. was a Spacesaver Area Contractor with authority to use our SPACESAVER trademark, including use of the spacesaversystems.com domain name, but subject to express conditions set forth in its Area Contractor Agreement.” [Emphasis supplied]. Neither party could produce a copy of the Area Contractor Agreement in effect between Spacesaver Corporation and the Respondent as of October 1997, when Respondent registered the Domain Name, but Timothy Powers, President of Respondent from 1988 until August 2014 stated in his Declaration submitted by Respondent in response to the Panel’s Order to furnish copies of the relevant Area Contractor Agreements that while he had no record of Spacesaver Corporation ever giving express written permission to register the Domain Name, when his company was first organized and began operating as a Spacesaver Area Contractor in 1988 Spacesaver Corporation encouraged his company and other area contractors to include the word “Spacesaver” in their company names and to use the word “Spacesaver” in their marketing operations. He further stated that in the 13 years after Respondent registered the Domain Name in 1997, Spacesaver Corporation never once asked it to change that name or transfer it to any other corporation until after the Area Contractor agreement was terminated. The Panel finds this evidence persuasive. It is corroborated by the fact that Complainant’s own email address, info@spacesaverinfolinx.com, contains the SPACESAVER mark, apparently also without objection from Spacesaver Corporation.
Thus, while there may have been no express written authorization from Spacesaver Corporation for Respondent to register the Domain Name, ample evidence exists to support a finding that such authorization was implied and in fact actually existed. The Panel finds and determines that Respondent’s registration of the Domain Name in October 1997 was in good faith.
Complainant contends that Respondent is currently using the Domain Name in bad faith and points to factors it claims fit within the various indicia of bad faith listed in Policy ¶4(b). The Panel must first determine, however, whether subsequent events can somehow cancel or negate the original good faith registration. Claimant asserts that Respondent’s termination of its relationship with Spacesaver Corporation extinguished its so-called good faith registration and cites Elevation Bed, LLC v. Contour Adjustable Beds, FA 12030011433213 (Nat. Arb. Forum April 28, 2012), citing Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum December 29, 2003). The Daedong-USA case held that the original registration was made in bad faith and therefore is of no help to Complainant. The Elevation Bed case does indeed stand for the proposition that subsequent bad faith use of the domain name extinguished the original good faith registration. There are other cases not cited by Complainant that reach the same result: bad faith registration is construed retroactively through later bad faith use. See, e.g., Anbex Inc. v. WEB-Comm techs. Group, FA 780236 (Nat. Arb. Forum September 19, 2006). None of these cases, however, addresses the plain language of Policy ¶4(a)(iii), which requires the Complainant to prove that the “domain name has been registered and is being used in bad faith.” In an early WIPO decision addressing this point, the Panel analyzed the language of the Policy and commented upon portions of an ICANN Staff Report on Implementation documents for the UDRP, as follows:
7.4 The significance of the use of the conjunction "and" is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith. That is to say, bad faith registration alone is an insufficient ground for obtaining a remedy under the Uniform Policy. This point is acknowledged in the Administrative Panel Decision in the WIPO Center Case No. D99-0001, the first case decided under the Uniform Policy. In paragraph 6 of that Decision, the Administrative Panel refers to the legislative history of the Uniform Policy, and in particular to the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy submitted to the ICANN Board at its meeting on October 24, 1999. That Report, at paragraph 4.5, contains the following relevant statement and recommendation:
“Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example:
“a. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.”
7.5 From the fact that the ICANN Board accepted the approach recommended in the Second Staff Report, and thus adopted the Uniform Policy in the form originally proposed, it is clear that ICANN intended that bad faith registration alone not give rise to a remedy under the Uniform Policy. For a remedy to be available, the Complainant must prove both that the domain was registered in bad faith and that it is being used in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, D 2000-0003 (WIPO February 18, 2000).
The Panel in the Telstra case was concerned primarily with whether the complainant there need prove bad faith use in addition to bad faith registration. Nevertheless, its analysis and consideration of the history of the UDRP still clarify two important matters: (1) the drafters of the Policy were fully aware that requiring proof of both bad faith registration and use might result in denying relief under the streamlined dispute resolution process to parties who might in fairness be entitled to it, and (2) they still declined to expand the definition of “abusive registration” to include bad faith registration or use. The Telstra Panel ultimately found in favor of the Complainant but did so on the basis that passive use could be in bad faith. Other panels have followed the reasoning articulated by the Telstra Panel, relying on the plain wording of Policy ¶4(a)(iii), and the legislative history of the UDRP. See, Teradyne, Inc. v. 4tel Technology, No. 2000-0026 (WIPO May 9, 2000) (“it was not the intent . . . to extend the definition of ‘abusive registration’ to include domain names originally registered in good faith.” See, Weatherall Green & Smith v. Everymedia.com, No. D2000-1528 (WIPO February 19, 2001) , Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI) No. D 2001-0782 (WIPO August 14, 2001) (If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith. Accord, Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005). The reasoning of the panels in these cases is more persuasive for the Panel in this case. The Policy is intended to provide a summary and inexpensive remedy for abusive domain name registrations. See, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, Sec 4.1(c ) (October 25, 1999) (The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.”) <http://www.icann.org/udrp-second-staff-report-24oct99.htm> Registrations originally made in good faith are not deemed abusive under the Policy and are not subject to cancellation or transfer based upon subsequent events.
Respondent’s current use of the Domain Name as an electronic address for email messaging in violation of an express provision of its written Area Contractor Agreement is in bad faith, and the Panel so finds. Still, the Complainant has not proven that the original registration of the Domain Name was in bad faith, and for this reason the Panel finds and determines that the Complainant has not met its burden under Policy ¶4(a)(iii).
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 <spacesaversystems.com> domain name REMAIN WITH Respondent.
Reverse Domain Name Hijacking
Respondent alleges pursuant to Rule 15(e) of the UDRP Rules that Complainant has acted in bad faith in bringing this proceeding, resulting in an abuse of the UDRP administrative process, and requests a finding of reverse domain name hijacking. The primary basis for this claim is that Complainant knew or should have known that it would be unable to prove bad faith registration, given that Spacesaver Corporation had authorized Respondent to register the Domain Name. The Panel rejects the claim of reverse domain name hijacking. Complainant demonstrated that there was no express authorization for Respondent to register the Domain Name. Also, there are prior decisions rendered under the Policy which hold that subsequent bad faith can extinguish an original good faith registration. While the Panel found for Respondent on these points it cannot say that Complainant did not raise any justiciable issues or that there were no facts supporting its claims. Accordingly, the Panel finds that the Complaint was not brought in bad faith. The Panel further notes that Respondent is in breach of its contractual obligations to stop all use of the SPACESAVER mark following the termination of its Area Contractor Agreement. Rule 15 (e) is intended to afford some level of vindication to an innocent party who has been put to the trouble and expense of defending against a complaint filed in bad faith. This Respondent is not innocent, and it is not entitled to a finding of reverse domain name hijacking.
Charles A. Kuechenmeister, Panelist
Dated: October 13, 2014
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