Datalyst LLC v. Lee Estes
Claim Number: FA0704000954109
PARTIES
Complainant is Datalyst LLC (“Complainant”), represented by James
J. Interlandi, 1759 W. Wellington, Suite 4000, Chicago, IL 60657. Respondent is Lee Estes (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <datalyst.com> and <datalyst.biz>, registered with Go Daddy
Software, Inc.
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 9, 2007.
On April 5, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <datalyst.com> and <datalyst.biz> domain names are
registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of both names. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 12, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 2, 2007 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@datalyst.com and postmaster@datalyst.biz by e-mail.
A timely Response was received and determined to be complete on May 2, 2007.
Complainant filed an Additional Submission on May
4, 2007, pursuant to the Forum’s Supplemental Rule 7. Notwithstanding that rule, under Paragraph 12
of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”), discretion to request such supplementation rests solely with the
Panel. In general, a Panel should
consider additional submissions only in exceptional circumstances, such as
where they reflect newly discovered evidence not reasonably available to the
submitting party at the time of its original submission or rebut arguments by
the opposing party that the submitting party could not reasonably have
anticipated. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr.
10, 2006). In this case, the Panel finds
no exceptional circumstances to be present, and therefore declines to consider
the Additional Submission.
On May 8, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the disputed domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that it has trademark rights in the word mark
DATALYST. Complainant has an application
for registration of this mark pending before the U.S. Patent & Trademark Office,
and claims to have common law rights in this mark. Complainant alleges that its rights to the
DATALYST mark arise from its use of the mark dating back to September 1, 2003.
Complainant contends that the disputed domain names <datalyst.com> and <datalyst.biz>
are identical to Complainant’s DATALYST mark, that Respondent has no rights or
legitimate interests in these domain names, and that Respondent registered and
is using the domain names in bad faith.
In support of its bad faith claim, Complainant alleges that Respondent
is engaged in the business of buying and selling domain names; that Respondent
is attempting to profit by using the disputed domain names to promote goods and
services that compete with those of Complainant; that Respondent has indicated
a willingness to sell the domain names at a high price; and that Respondent has
prevented Complainant from registering a domain name incorporating its mark and
has engaged in a pattern of such behavior.
B. Respondent
Respondent contends, inter alia,
that it did not register the disputed domain names in bad faith, and asserts that
it was the first to use the name “datalyst.”
Respondent states that it registered <datalyst.com> on or about August 19,
2002, and <datalyst.biz> on or about
June 30, 2003, and that both of these dates predate Complainant’s claimed first
use of its DATALYST mark. Respondent
requests that the Panel deny the Complaint and find that Complainant has
engaged in reverse domain name hijacking.
FINDINGS
The Panel finds that the disputed domain
names were not registered in bad faith.
The Panel further finds that the Complaint in this proceeding was
brought in bad faith in an attempt at reverse domain name hijacking, and
constitutes an abuse of this administrative proceeding.
Because the Panel’s finding as to bad faith
registration is dispositive of the present matter, the Panel declines to enter
findings as to the other elements set forth in Paragraph 4(a) of the Policy.
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 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;
(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.
Because the Panel’s finding as to the third element is dispositive, the
Panel declines to address the questions of identicality or similarity to a
trademark and rights or legitimate interests.
The undisputed chronology of the case makes
it clear that the disputed domain names were not and could not have been registered
in bad faith. The disputed domain names
were registered in August 2002 and June 2003, while Complainant did not adopt
its trademark until September 2003. Under
Paragraph 4(b)(iv) of the Policy, subsequent bad faith
use of a domain name may, in appropriate circumstances, be probative of a
domain name registrant’s intent at the time of the initial registration of the
domain name. Such is clearly not the
case here, however, because in August 2002 and June 2003 Respondent could not
possibly have harbored a bad faith intent in regard to
a trademark that did not even exist until September 2003. See,
e.g., Motley Fool v. Domain Works, Inc., D2006-1625 (WIPO Mar. 20, 2007); Ode v. Intership Ltd., D2001-0074 (WIPO
May 1, 2001).
A finding of Reverse Domain Name Hijacking
may be made if “the Complainant knew or should have known at the time that it
filed the Complaint that it could not prove that the domain name was registered
in bad faith.” Proto Software, Inc. v. Vertical Axis, Inc., D2006-0905 (WIPO Oct.
10, 2006) (quoting Futureworld
Consultancy (Pty) Ltd. v. Online Advice, D2003-0297 (WIPO July 18,
2003)). Where the domain name
registration predates the very existence of the trademark, and Complainant is
aware of this fact but nonetheless brings a Complaint under the Policy, a Panel
may appropriately find that the Complaint has been brought in bad faith and
constitutes an abuse of the administrative proceeding. See, e.g., NetDeposit, Inc. v. NetDeposit.com, D2003-0365 (WIPO
July 22, 2003). Such are the
circumstances here. Complainant
acknowledges having consulted the registration records for the disputed domain
names prior to filing the Complaint, and therefore must have appreciated the utter
impossibility of proving that Respondent registered the domain names for
reasons relating in any way to Complainant or its trademark. The Panel finds that Complainant has brought
the Complaint in this proceeding in bad faith in an attempt at reverse domain
name hijacking, and that Complainant’s actions in so doing constitute an abuse
of this administrative proceeding.
DECISION
Having considered the elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED, and finds that the Complainant has engaged in reverse domain name
hijacking.
David E.
Sorkin, Panelist
Dated: May 9, 2007
NOTE
Following the submission of the Panel’s
decision in this matter to the Forum, an Additional Submission from Respondent
was received by the Forum on May 11, 2007.
Because Respondent’s Additional Submission merely responds to material
in Complainant’s Additional Submission, which the Panel has already elected not
to consider, the Panel similarly has elected not to consider Respondent’s
Additional Submission.
David E.
Sorkin, Panelist
Dated: May 14, 2007
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