National Arbitration Forum

DECISION

The Smart Group, LP v. Marketpoints.com New Media Branding Services c/o DNS Administrator

Claim Number: FA0603000653401

PARTIES

Complainant is The Smart Group, LP c/o Michael B. Maledon, Esq. (“Complainant”), 1550 E. Missouri Avenue, Suite 300, Phoenix, AZ 85014. Respondent is Marketpoints.com New Media Branding Services c/o DNS Administrator (“Respondent”), represented by Eyetooth Branding and Trademark, 325 Bleecker Street, Ste 6-19, New York, NY 10014.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smartnote.com>, registered with Enom, Inc.

PANEL

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.

David S. Safran as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 7, 2006.

On March 6, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <smartnote.com> domain name 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 March 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 2006 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@smartnote.com by e-mail.

A timely Response was received and determined to be complete on April 3, 2006.

On April 11, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s <smartnote.com> domain name is confusingly similar to its SMARTNOTE mark which Complainant has registered with the United States Patent and Trademark Office (Reg. No. 2,639,944), that Respondent has no rights or legitimate interest with respect to the domain name, is not commonly known by the domain name and that the domain name was registered in bad faith.

B. Respondent

Respondent contends that it registered the <smartnote.com> domain name in good faith for legitimate reasons prior to acquisition of any rights by Complainant in the SMARTNOTE mark.

FINDINGS

The panel finds the Complaint completely devoid of factual support for any of the elements necessary to prove two of the three elements required to obtain the order requested, and that the facts evidence an attempt at reverse domain name hijacking by Complainant.

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

Because Respondent registered the <smartnote.com> domain name on January 16, 2000, before Complainant made use of the trademark or filed for a trademark registration with the USPTO on June 4, 2001, the Panel concludes that Respondent’s rights to the disputed domain name predate Complainant’s rights to the mark and, therefore, Complainant has not satisfied Policy ¶ 4(a)(i). See Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”); see also Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶ 4(a)(i) because the respondent's domain name registration predated the complainant’s rights in its mark by nearly two years).

Furthermore, the Panel finds that Complainant has not established prior common law rights to the SMARTNOTE mark, because Complainant has submitted no evidence to show that the mark has acquired secondary meaning in connection with its loan payment services. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof, e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).

Rights or Legitimate Interests

Respondent argues that it is using the disputed domain name in connection with a bona fide offering of goods or services, because it is in the business of creating and supplying domain names to new business entities and registered the <smartnote.com> domain for use by an instant messaging utility, music company or texting enterprise. Furthermore, Respondent claims that it has never offered the <smartnote.com> domain name for sale to the public or Complainant. The Panel agrees that Respondent’s use of the disputed domain name constitutes a bona fide offering of goods or services, such that Respondent has demonstrated rights or legitimate interests in the <smartnote.com> domain name pursuant to Policy ¶ 4(c)(i). See Alphalogix Inc. v. MarketPoints.com, FA 491557 (Nat. Arb. Forum. Jul. 26, 2005) (“Respondent is in the business of creating and supplying domain names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”); see also Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy).

In addition, the Panel finds that Respondent has established rights or legitimate interests in the <smartnote.com> domain name pursuant to Policy ¶ 4(a)(ii), because it registered the domain name prior to Complainant’s use or registration of the mark, and thus, its rights to the domain name predate Complainant’s rights to the mark. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the complainant applied for registration of the mark after the respondent registered the domain name and the complainant has not proven any earlier use of the mark); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).

Registration and Use in Bad Faith

Because Respondent registered the disputed domain name before Complainant registered the SMARTNOTE mark with the USPTO, the Panel finds that Respondent’s rights to the <smartnote.com> domain name predate Complainant’s rights to the mark and thus Respondent did not register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register a disputed domain name in bad faith if the complainant's company did not exist at the time of registration).

Moreover, Respondent asserts that it is a legitimate domain name reseller and did not register the disputed domain name for the primary purpose of selling it to Complainant. Therefore, the Panel concludes that Respondent has not registered and used the <smartnote.com> domain name in bad faith under Policy ¶ 4(b)(i), because Respondent is a generic domain name reseller and offers numerous domain names for sale. See John Fairfax Publ’n Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the respondent is a seller of generic domain names); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].”).

Respondent also alleges that it could not have registered and used the disputed domain name to prevent Complainant from reflecting its mark in the domain name, disrupt Complainant’s business, or deliberately redirect Internet users seeking Complainant’s services to its own website for commercial gain, since the undisputed facts evidence that Complainant had no business using the mark in the domain name at the time that the domain name was registered by Respondent. The Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b), and that Respondent’s registration and use of the <smartnote.com> domain name was not in bad faith registration pursuant to Policy ¶ 4(a)(iii). See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith use, even though the respondent’s ownership and purported use of the domain name frustrated the complainant’s business efforts, because nothing indicated that the respondent intended to prevent the complainant from reflecting its mark in a corresponding domain name, to disrupt the complainant’s business, or to intentionally attract the complainant’s customers to the respondent’s site by creating a likelihood of confusion); cf. Ingram Micro, Inc. v. Ingredients Among Modern Microwaves, D2002-0301 (WIPO May 15, 2002) (finding that the respondent’s failure to use the disputed domain name did not give rise to bad faith pursuant to Policy ¶ 4(a)(iii) because the respondent was not using the domain name for commercial gain, disrupting the complainant’s business, or selling the domain name to the complainant for profit).

DECISION

Having failed to established any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <smartnote.com> domain name be retained by Respondent.

David S. Safran, Panelist
Dated: April 25, 2006

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