DECISION

Louie Orbeta v. GENIUS Technologies Inc. c/o Raj Baronia

Claim Number: FA0310000201467

PARTIES

Complainant is Louie Orbeta (“Complainant”), represented by Louie Orbeta, 438 Lipton St., Winnipeg, MB, Canada. Respondent is GENIUS Technologies Inc c/o Raj Baronia, 604 Fallen Leaf Circle, San Ramon, CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <puremail.com>, registered with BulkRegister.Com.

PANEL

The undersigned Daniel B. Banks, Jr., as Panelist, 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 7, 2003; the Forum received a hard copy of the Complaint on October 16, 2003.

On October 7, 2003, BulkRegister.Com confirmed by e-mail to the Forum that the domain name <puremail.com> is registered with BulkRegister.Com and that the Respondent is the current registrant of the name. BulkRegister.Com has verified that Respondent is bound by the BulkRegister.Com 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 October 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 10, 2003 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 postmaster@puremail.com by e-mail.

A timely Response was received and determined to be complete on November 7, 2003.

On November 14, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

PUREMAIL is a registered U.S. Federal Trademark of Complainant Louie Orbeta, in International Class 009. In the USA it is registered at the United States Patent and Trademark Office, Registration Number 2,659,638. In Canada it is registered at the Canadian Intellectual Property Office, Registration Number TMA590466.

Goods and/or services include: Electronic mail software that allows users to send, receive and filter electronic messages; the software includes electronic mail user authentication, managed protection from unsolicited electronic mail and computer viruses that is updated with minimal customer intervention, and may be offered as email, web mail, imap, or software add-on to existing electronic mail software. Its first use in commerce was November 20, 1998.

Complainant is the sole holder of the PUREMAIL U.S. Federal Trademark. Complainant has also obtained registration for the PUREMAIL trademark in Canada. Specifically, Complainant is the holder of the United States Patent Trademark Office (“USPTO”) Registration No. 2,659,638 (filed on December 1, 2001, registered on the Principal Register on December 10, 2002) for the PUREMAIL trademark. Complainant also holds Registration No. TMA590466 (filed on December 10, 2001, registered on September 22, 2003) for the PUREMAIL trademark with the Canadian Intellectual Property Office (“CIPO”).

PureMail program is currently used in over 100 countries and has been featured in several PC magazines and websites. The PureMail program has been reviewed by several popular software sites such as <zdnet.com>, <about.com> and <lockergnome.com>; and has been made available on several popular software download sites such as <simtel.net>, <about.com>, <zdnet.fr> and <freewarepro.com>. A web search using any popular web search service such as <google.com>, <yahoo.com>, <altavista.com> and <alltheweb.com>; and an examination of archived newsgroups in <google.com> shows that Complainant’s PUREMAIL trademark is clearly associated with Complainant’s PureMail email filtering program.

The PureMail email filtering software developed by Complainant uses the trademark PUREMAIL as an integral identifying mark in association with its business, and Complainant has invested significant time, resources, and effort in advertising, promoting, and establishing goodwill in the mark in association with its business. Complainant has not licensed or otherwise permitted Respondent to use its PUREMAIL trademark for any reason.

As of October 4, 2003, the <puremail.com> website advertised the following:

1. “An external solution for Detection, Detention, and Deletion of Un-wanted Email (e.g. spam and virus) - much before it reaches an individual user's desktop.”

2. “Completely customizable at the individual level - the user decides what kind

of Email is "Wanted" or "Un-wanted"”

3. “An efficient "Outsourced" Email Management system for the entire Enterprise - serving everybody@yourdomain.com”

4. “External Archiving and Backup of incoming Email”

5. “External Audit Logs of incoming Email - serving as "Proof-of-Delivery" by a third-party”

Complainant is the sole owner of the PUREMAIL trademark and has not licensed or otherwise permitted Respondent to use its trademark for any purpose. A trademark search on the USPTO and CIPO websites show that Respondent has not registered, applied for, nor claimed rights in any trademarks or business names that incorporate the word PUREMAIL or any variation of PURE and MAIL. A web search on any popular web search engine such as <google.com>, <yahoo.com>, <altavista.com> and <alltheweb.com> fail to produce any results linking Respondent with <puremail.com>, but rather identifying itself as GENIUS Technologies Inc. c/o Raj Baronia on <genius.net>.

As of October 4, 2003, Respondent was offering email filtering services on the <puremail.com> website, with a logo branding it as “PUREmail™”. Users visiting the website are presented with an email filtering service that was neither developed nor licensed by Complainant. Essentially, Respondent is misappropriating the goodwill and recognition associated with the PUREMAIL trademark to lure users to its site where the user could subsequently purchase a product from a competitor. Respondent is therefore usurping internet traffic rightly intended for the Complainant.

The <puremail.com> website was inactive from the start date of purchase on Nov 14, 1996 until October 4, 2003. An inspection of <puremail.com> archived websites on <archive.org> (according to the <archive.org> website FAQ, it offers “a service that allows people to visit archived versions of Web sites” dating back to 1996) shows that from November 14, 1996 to October 4, 2003, the contents of the <puremail.com> website are as follows:

· From Nov 14, 1996 to May 30, 2002: The <puremail.com> domain did not resolve to a website.

· From May 30, 2002 to Feb 04, 2003: “Under Construction! For any inquiries related to this domain, strategic alliance, or investor relations please contact us at: info@genius.net”

· From Feb 04, 2003 to Oct 04, 2003: “Puremail is coming soon.”

· From October 04, 2003 to Oct 06, 2003: Respondent’s use of the domain name <puremail.com> is in connection with an offering of goods and/or services that is confusingly similar to Complainant’s PUREMAIL trademark and goods and services.

· October 06, 2003: The <puremail.com> website does not have any content. Complainant faxed a cease-and-desist letter to Respondent on Oct 04, 2003. Respondent subsequently removed all content from the <puremail.com> website on Oct 06, 2003.

From October 4-6, 2003, Respondent advertised email filtering services on <puremail.com> to unwary Internet users by causing them to believe that any goods and/or services displayed at Respondent’s website are somehow connected with or endorsed by Complainant.

Complainant asserts that Respondent should have been aware that Complainant had rights in the PUREMAIL trademark when it started offering email filtering services, as evidenced by Complainant’s registration of the PUREMAIL trademark with the USPTO and CIPO, its long and continuous use of the trademark in commerce since 1998 and the notoriety of Complainant’s trademark.

Complainant also asserts that it is evident from Annex A that by using the <puremail.com> domain name to offer email filtering services, Respondent has demonstrated bad faith by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with the Complainant’s PUREMAIL trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

Complainant also asserts that it is evident from Annexes B, C & P, where Respondent did not actively use the domain name by not having a content-filled website hosted on <puremail.com>, nor listing any bona fide goods and/or services, is evidence of bad faith.

Complainant also asserts that it is evident from Annex B that Respondent’s general offer to sell the <puremail.com> domain name from May 30, 2002 to February 4, 2003, even if no certain price is demanded, is evidence of bad faith.

B. Respondent

Genius Technologies, Inc. (GENIUS) is a U.S. corporation formed in 1995. It provides a wide range of email management services including email hosting, archival cataloging, filtering, security as well as audit and regulatory compliance for its clients.

GENIUS registered the domain name <puremail.com> on November 14, 1996 and since February 1997, has been using the domain name in provision of its email management services for its clients. Over the years, the domain <puremail.com> has been well integrated into various software applications and custom tools developed by GENIUS for provision of its email management services.

While the domain name has been in active service since February 1997, GENIUS chose not to have a public web-site associated with the <puremail.com> for various reasons, paramount among them being the security concern for GENIUS clients whose email and valuable data was being hosted on computer servers identified with the domain <puremail.com>.

Notwithstanding the lack of a public web-site, GENIUS clients have always had access to a private version of <puremail.com> web-site (https://secure.<puremail.com>) via secure login enabling them to utilize various email management services. As such, the domain <puremail.com> is commonly known among and is actively used by GENIUS clients.

GENIUS has legitimate interests in the <puremail.com> domain name. It registered the domain name on November 14, 1996, more than six years before Complainant’s trademark registration date of December 10, 2002. Since February 1997, and well before GENIUS became aware of any dispute, it has been actively using the domain name for hosting and managing its client’s email. Also GENIUS has integrated the domain name into various software applications and custom tools developed as part if its email management services. Such use constitutes a bonafide offering of goods and services in connection with the domain name. Respondent has become commonly known by the domain name among its clients.

Respondent’s registration and use of the domain name is not in bad faith. It is legitimate and not intended to divert consumers or to tarnish Complainant’s trademark. The fact that Respondent registered the domain name nearly six years before Complainant’s registration of the PUREMAIL trademark and over two years before Complainant’s alleged first use date of November 20, 1998 shows that the name was not registered in bad faith. Further, GENIUS has consistently refused to sell the name despite multiple offers, including several offers from Complainant.

Arguably, it is Complainant’s efforts here which are conducted in bad faith. Complainant was well aware of the fact that the domain name <puremail.com> was already registered and in use by GENIUS at the time he chose a “confusingly similar” name for his software product. Complainant went on to register this “confusingly similar” name in the United States and in Canada knowing all along that <puremail.com> had already been established as a service mark of GENIUS by virtue of its use since February 1997.

FINDINGS

1 – Respondent concedes that the disputed domain name is identical to Complainant’s PUREMAIL mark.

2 – The Respondent has rights and legitimate interests in the disputed domain name.

3 – The domain name was not registered or used in bad faith.

DISCUSSION

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 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.

Identical and/or Confusingly Similar

Respondent concedes that the name is identical to Complainant’s mark.

Rights or Legitimate Interests

Respondent has been actively using the disputed domain name to host and manage client email since 1997, prior to any of Complainant’s rights in the PUREMAIL mark. This constitutes evidence that it has been making a bona fide offering of goods or services at the disputed domain name and is evidence of its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that Respondent does have a legitimate interest in the domain name where Complainant applied for registration of the mark after Respondent registered the domain name and Complainant has not proven any earlier use of the mark); see also Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because Respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by Complainant).

Respondent also has demonstrated that because of widespread use of the disputed domain name, clients have come to “commonly know” Respondent by the disputed domain name. This is further evidence that Respondent has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., & Seattle Pen, Inc., D2000-0736 (WIPO Sept. 14, 2000) (finding that as Respondent registered the trade name "WORLD PEN" in July 1996 and had been conducting business under that name since that date, it had rights or legitimate interests in the disputed domain name); see also Always On UPS Systems Inc. v. Always-On, Inc., FA 114467 (Nat. Arb. Forum Aug. 22, 2002) (finding that as Respondent submitted evidence, via a press release and product information, that it used Complainant’s alleged common-law mark to identify the Respondent and its business, it had rights or legitimate interests in the disputed domain names).

Registration and Use in Bad Faith

Respondent registered the disputed domain name two years before Complainant allegedly began using the PUREMAIL mark, therefore it could not have registered the disputed domain name in bad faith. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that it is impossible for Respondent to register disputed domain name in bad faith if Complainant's company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant).

Also, the fact that Respondent has never attempted to sell its domain name registration, and has in fact refused to sell it to Complainant on several occasions, is evidence that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See PRIMEDIA Special Interest Publ’n Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that Respondent did not register the domain names in bad faith where there is no evidence that Respondent intended to sell the domain name or disrupt Complainant’s business); see also Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record did not indicate any purpose or intent on the part of Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

Furthermore, since Respondent has been using the disputed domain name since 1997, it could not be considered to be “passively holding” the disputed domain name as alleged in the Complaint. See Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where Respondent was using the domain name in connection with its business even though no website was yet developed); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that Complainant has failed to prove that the domain name <ezstreet.com> was registered and is being used in bad faith or held passively for use by Respondent in bad faith).

Reverse Domain Name Hijacking

It is arguable that Complainant has engaged in Reverse Domain Name Hijacking, however, since the decision does not hinge on this aspect, it is not considered

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s request for relief shall be DENIED.

Daniel B. Banks, Jr., Panelist
Dated: November 29, 2003