Apmetrix Inc. v. DOMAIN ADMIN
Claim Number: FA1505001618846
Complainant is Apmetrix Inc. (“Complainant”), California, USA. Respondent is DOMAIN ADMIN (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <appmetrix.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.
Eduardo Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2015; the Forum received payment on May 12, 2015.
On May 12, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <appmetrix.com> domain name is registered with eNom, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2015 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@appmetrix.com. Also on May 21, 2015, 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 June 5, 2015.
On June 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Machado as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 uses the APPMETRIX mark in connection with its services in cloud computing. Complainant has registered the APPMETRIX mark before the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,389,604, filed October 2, 2012; registered August 20, 2013). Respondent’s <appmetrix.com> domain name is identical to Complainant’s mark as it incorporates the APPMETRIX mark entirely.
Respondent has no rights or legitimate interests in the <appmetrix.com> domain name, as the APPMETRIX mark is owned by Complainant.
Respondent has registered and used the <appmetrix.com> domain name in bad faith.
B. Respondent
In response to Complainant’s allegation, Respondent requests the Panel to deny the remedy sought by Complainant, basically alleging that:
Respondent’s <appmetrix.com> domain name is comprised of the generic terms “app” and “metrix.”
There are already more than 1000 registered domain names using the keyword “metrix”.
Respondent is an internet service provider and registered the <appmetrix.com> domain name for development of its business. Such use exhibits its rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent’s website does not cause confusion with Complainant’s website as it does not assert any association with Complainant. Instead, Respondent’s website resolves to a parking page.
At the end, Respondent highlighted the following points: I - Complainant’s active website is <apmetrix.com>; II – Respondent is not sure if Complainant is using the term Appmetrix on its website; III – Respondent has parked the domain name <appmetrix.com> with a reputable “agragator” while the domain name is being developed; and IV – A review of the site reflects no mention or reference to Complainant’s business or trademark.
Complainant was not able to demonstrate that Respondent incurred in bad faith registration and use of the disputed domain name under the policy.
The Complainant is the owner of the trademark registration No. 4,389,604, for the APPMETRIX mark, filed before the United States Patent and Trademark Office (“USPTO”) on October 2, 2012; being registered on August 20, 2013.
The disputed domain name was registered on December 6, 2006.
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.
Identical or Confusingly Similar / Rights or Legitimate Interests
Because of the Panel’s findings in relation to the bad faith ground below, it is not necessary for the Panel to make findings on these two grounds. Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown that the complainant could not satisfy one element); Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant had failed to meet its burden for one).
The Panel finds that the disputed domain name was registered on December 6, 2006, i.e: more than 5 (five) years before the filing (or first use) of Complainant’s APPMETRIX mark.
Hence, the Panel notes that it is clear that the disputed domain name was registered before any trademark rights which Complainant might establish.
The Panel did not find any evidence in the records that contradict such finding.
In this context paragraph 3.1 of WIPO Overview 2.0 states the following consensus view:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
The Panel concludes that applies to the present case.
For a finding of bad faith under paragraph 4(a)(iii) of the Policy, there must be some evidence that Respondent was aware of Complainant and sought to take advantage of its mark.
In this case, the Panel notes that there is no evidence that Respondent sought to take advantage of Complainant’s mark. In fact, when the disputed domain name was registered, in 2006, Complainant had no mark. Neither was there any evidence that, at that time, Respondent knew or should have known that Complainant was intending to use or register any potential mark.
Furthermore, the Panel also notes that Respondent is not using the disputed domain name to mislead Complainant’s consumers nor in any association with its business or registered mark.
Accordingly, Complainant has not established the third element of the Policy.
As a consequence, Complainant cannot succeed at all, because it cannot establish all three elements under paragraph 4(a) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <appmetrix.com> domain name REMAIN WITH Respondent.
Eduardo Machado, Panelist
Dated: June 24, 2015
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