Register.com, Inc. v. Shwarnaalakshumi c/o
ACIIndia
Claim Number: FA0607000747648
PARTIES
Complainant is Register.com,
Inc. (“Complainant”), represented by Brett
E. Lewis, of Lewis & Hand, LLP, 45 Main Street,
Suite 818, Brooklyn, NY 11201.
Respondent is Shwarnaalakshumi c/o ACIIndia (“Respondent”), D3 vensonpark, Chennai, null 600028, IN.
The domain name at issue is <comregister.com>,
registered with Direct Information Pvt
Ltd d/b/a Publicdomainregistry.com.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 11, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 12, 2006.
On July 21, 2006, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com
confirmed by e-mail to the National Arbitration Forum that the <comregister.com> domain name is
registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and
that the Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a
Publicdomainregistry.com has verified that Respondent is bound by the Direct
Information Pvt Ltd d/b/a Publicdomainregistry.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 July 26, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 15, 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@comregister.com by e-mail.
A timely Response was received in hard copy on August 15, 2006. However, the Panel considers this Response
to be deficient pursuant to ICANN Rule 5(a), as the Response was not received
in electronic format by the Response deadline.
Nonetheless, the Panel elected to consider the Response for all
purposes.
A timely and complete additional submission was received from
Complainant on August 18, 2006.
A timely and complete additional submission was received from
Respondent on August 21, 2006.
On August 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <comregister.com> domain name (the “domain name at issue”)
is confusingly similar to Complainant’s USPTO
registered REGISTER mark.
2. Respondent does not have any
rights or legitimate interests in the above described mark or in the domain
name at issue.
3. Respondent registered and has used the
domain name at issue in bad faith.
B. Respondent
1. Complainant’s REGISTER mark
is common and in use by everybody, so <comregister.com>
is not identical or or confusingly similar to Complainant’s mark.
2. Respondent has been using
the domain name at issue in its ACIINDIA business for the last six or seven
years and they have spent money to develop the domain for such time.
3. The domain name at issue was not registered
and is not used in bad faith.
C. Additional Submissions
Both parties filed Additional Submissions and they were considered by
the panel for all purposes.
FINDINGS
Complainant, Register.com, Inc., (“Complainant”) is the owner of the
United States trademarks for REGISTER® (Registration No. 2,664,968 and
2,963,978) and REGISTER.COM® (Registration Nos. 2,664,967, 2,785,206,
2,828,845, 3,072,366 and 3,072,365) (the “REGISTER® Marks”). Complainant first used the REGISTER®
Marks in commerce in 1994 and has
used them continuously and extensively in connection with the provision of
domain name registration services, online search engine services, website hosting
and development services, electronic mail services and other related services
ever since. Moreover, by early 1999,
Complainant had registered more than 300,000 domain names for Network
Solutions, Inc., making it one of the leading domain name registration services
at that time.
Complainant, which
is currently a privately-owned company, was the second ICANN-accredited company to compete in the domain name
registration field and has consistently
been one of the leading companies in its industry to register domain names.
As of June 30,
2005, Complainant was managing approximately 2.9 million computer network addresses under the
Register.com trademark and has millions of visitors
to its website every month. Net revenues relating to services marketed and sold
under the REGISTERâ Marks since 2000 total well over half a
billion dollars.
Complainant’s
services have been extensively advertised under the REGISTER® Marks through
all forms of media, including national television and radio, nationally-distributed
print publications, and on major
websites. Complainant has spent tens of
millions of dollars on such
advertising.
Although, as
previously noted, the Complainant was the second company accredited to “register” domain names by ICANN, as
of the Summer of 2005, there were 289 such companies
accredited by ICANN to “register” besides Complainant. Many of these fellow registrar companies, presumably at least competitive to
some extent in the registration
business with Complainant, use some form of the word “register” in their company names.
It appears that
Respondent registered the domain name at issue on December 12, 1999, nearly seven years ago (only two
months after ICANN approved the UDRP). That registration
is current. Complainant acknowledges
that Respondent used <comregister.com>
prior to “February or March
of 2004” to redirect web traffic to Respondent’s
<IndiaRegister.com> website. Complainant does not otherwise challenge Respondent’s claim in a letter dated
August 3, 2006 that “…we have been using for the last six to seven years
and we have had our business in this domain name and also we have spend our money and time to
develop this domain for last six to seven years.”
In April of 2004, Complainant sent a cease and desist email message to the current registrant of <comregister.com>. On the same day, the Respondent sent an email response refusing to change ownership of the domain and with no demand for compensation to make the assignment of the domain name. There is no indication of any other communications between the parties during the more than two years between that exchange of email and the filing of this proceeding.
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.
The addition of the term “com” to
the beginning of Complainant’s mark is sufficient to distinguish Respondent’s <comregister.com> domain name from Complainant’s mark. See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are
context-specific concepts. In the Internet context, consumers are aware that domain names for different
Web sites are quite often similar, because of the
need for language economy, and that very small differences matter."); see
also Google, Inc. v.
Wolfe, FA 275419 (Nat. Arb. Forum July 18,
2004) (“The <froogles.com> domain
name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently
different to make it distinguishable from Complainant's
mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the
mark.”). While Complainant’s
registration of REGISTER with the USPTO
offers protection and certain presumptions with respect to that mark, the domain name at issue is not
identical or confusingly similar to that mark, as
is suggested by the fact that ICANN has accredited a number of registrars, in
addition to Complainant, which
include some form of “register” in their names.
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i).
Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name). Here, it is clear that Complainant knew, and in fact admits, that Respondent was using the domain name at issue in connection with its IndiaRegister.com business at least as early as February or March of 2004, and Complainant was on constructive notice of registration of <comregister.com> on December 12, 1999.
Respondent asserts, and Complainant does not deny, that Respondent has been using the disputed domain name for the past six or seven years in connection with its business. Respondent asserts that it has spent both valuable time and money in the use of the website associated with the domain name at issue. Respondent has developed a bona fide use of the disputed domain name, and Respondent has legitimately used the <comregister.com> domain name. See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating “a bona fide offering of goods and services”).
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(ii).
Since the
panel has found that Respondent has rights
or legitimate interests in the <comregister.com>
domain name pursuant to Policy ¶ 4(a)(ii), Respondent did not register the domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See
DJF Assocs., Inc. v. AIB
Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent
has shown that it has a
legitimate interest in the domain name because the respondent selected the name in good faith for
its website, and was offering services under the domain name prior to the initiation of the dispute); see also Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA
366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's
rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no
bad faith registration or use under Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(iii).
DECISION
The Complainant has not established any of the three elements required
under the ICANN Policy. Accordingly,
the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: September 11, 2006
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