DECISION

 

Novell, Inc v. Novell Consulting

Claim Number: FA0109000099758

 

PARTIES

The Complainant is Novell, Inc, Provo, UT (“Complainant”) represented by Patrick McBride, of Novell, Inc.  The Respondent is Novell Consulting, Franklin, WI (“Respondent”) represented by Richard Novell, of Novell Consulting.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <novellconsulting.com>, registered with Network Solutions.

 

PANEL

The undersigned Daniel B. Banks, Jr., 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 September 20, 2001; the Forum received a hard copy of the Complaint on September 21, 2001.

 

On September 25, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <novellconsulting.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 September 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2001 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@novellconsulting.com by e-mail.

 

A timely response was received and determined to be complete on October 10, 2001.

 

On October 12, 2001, an additional submission was received from Complainant and on October 17, 2001, an additional submission was received from Respondent.  Both additional submissions were received in a timely manner and were considered according to The Forum's Supplemental Rule #7.

 

On October 18, 2001, 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

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

 

PARTIES’ CONTENTIONS

A.     Complainant:

Complainant, Novell, Inc., is a leading provider of net services software that secures and powers all types networks as one net, across leading operating systems.  Novel first used the mark NOVELL in commerce on September 15, 1983, and received registration for the mark on June 4, 1985.  NOVELL is one of the most recognizable names in computers and computer software and as a result of long term and widespread use, has become famous.  NOVELL has a consulting branch that has operated under the name of "Novell Consulting" since 1998.  Novell consulting provides enterprises worldwide with customer-driven services and solutions based on Novell technologies.  Novell Consulting offers a full array of resources for its customers, including field consultants, process management, business solutions, custom development and product creation to meet their needs.

 

Respondent, Richard Novell, registered the domain name <novellconsulting.com> on January 19, 1999.  This domain name is confusingly similar with Novell's mark because it contains the registered NOVELL mark.  Also, it is identical to the name under which Novell offers its consulting services and has been known to confuse the public as to sponsorship, affiliation or authorization between the domain name use and Novell.

 

Respondent has no legitimate interest in the domain name although he claims that he had been using the term "Novell Consulting, Inc." in his tax preparation and consulting business for more than ten years.  Respondent has only been a certified CPA since 1998 and is not offering tax preparation and consulting services at <novellconsulting.com>.  Instead, he is directly competing with Novell's consulting services by displaying a mixture of visual basic programming and designer web page services and a personal home page.  He is using the domain name to bring Novell's customers to his site in an obvious attempt to cash in on Novell's good will in the mark.

 

Complainant met with Respondent on June 7, 2000 to try to reach an amicable solution and offered him many remedies to the situation, including purchasing a new domain name for him, adding a disclaimer to the web page and any printed materials and adding a link to Novell's web page and/or to Mr. Novell's web page.  Mr. Novell refused to agree to any changes unless he was paid $50,000.  He now claims that since "Novell" is his personal name, he has a right to use it in connection with a business.  He is using the name in bad faith and has now installed a device to count the number of times his web page is accessed. 

 

B. Respondent:

Respondent began his tax consulting business in 1984 and in 1993, his business became known as Novell's Consulting, Inc.  In January of 1999, Respondent attempted to register the business as a domain name with Network Solutions, Inc. as "Novell'sConsulting.com" but found that he could not register that name.  He then decided to change the business name to Novell Consulting, Inc. so that he could register the domain name <novellconsulting.com>.  Respondent had knowledge of Complainant's business but had no knowledge of the Complainant using the term "Novell Consulting".  Respondent conducted a United States Trademark search and found many registrations for the Complainant, however none of the registrations included the term "Novell Consulting".  Respondent has registered only one other domain name, that being "Strange-land.net", for his son's band.

 

Respondent has never intended to sell his web site to Complainant nor has he attempted to sell his web site to a competitor of Complainant.  In fact, Complainant approached Respondent to resolve this matter which resulted in a meeting in June 2000.  There was a discussion as to an offer to sell <novellconsulting.com> to the Complainant; however, Respondent never made a demand for money at that time or at any other time. 

 

Respondent registered the domain name after conducting an extensive search and finding no trademark either in existence or pending approval that matched the disputed domain name.  Novell is a bona fide surname and Respondent is using it in a legitimate business enterprise and has been since 1993.  Complainant has only been using the name since 1998.

 

Complainant's claim that Respondent registered the domain name in order to prevent Complainant from reflecting its trademark in a corresponding domain name is not supported because there is no "pattern of conduct" as required by 4(b)(ii) UDRP.  Also, Respondent did not register the domain name to disrupt the business of a competitor because the services offered by Respondent, which includes tax preparation and web site design, in no way directly disrupts the business of Complainant.  Finally, Respondent offered to add a disclaimer to his web site stating that he is not connected with nor endorsed by Novell, Inc. 

 

C.      Additional Submissions:

Complainant's additional submission refutes some of the statements made in Respondent's response.  It does not add any significant new information.  Respondent's additional submission refutes Complainant's additional submission but does not add any significant new information. 

 

FINDINGS

After consideration of the matters submitted, the undersigned finds as follows:

      1 - The disputed domain name contains the Complainant's registered trademark "NOVELL" but it is used in connection with the word "CONSULTING" to describe Respondent's business.  As such, it is not identical to Complainant's mark and, in the manner used, is not confusingly similar to Complainant's mark.

      2 - The Respondent has demonstrated a legitimate interest in the use of his surname in connection with his tax preparation and consulting business.

      3 - The evidence does not support a finding that Respondent registered and is using the disputed domain name 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

Although Respondent uses the Complainant's registered mark in his domain name, it is used in conjunction with the word "Consulting" to describe Respondent's business and as such, is not identical nor is it confusingly similar to Complainant's mark.

 

Rights or Legitimate Interests

Respondent has demonstrated legitimate interest in the disputed domain name in that it is his surname and he has been using the name in connection with his tax preparation and consulting business since 1984.  Respondent has been commonly known by the disputed domain name, which reflects the name of its consulting business, as well as Respondent’s surname.  See G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that Respondent had rights and legitimate interests in the <armani.com> domain name, where the domain name reflects the initials of Respondent’s first and middle name, combined with its entire last name).

 

Registration and Use in Bad Faith

The evidence does not support a finding that the Respondent registered and is using the disputed domain name in bad faith.  Prior to registration, he attempted to register "novell'sconsulting.com" but was unable.  It was only then that he registered the disputed domain name.  If he had intended to register the name in bad faith for one of the purposes described in UDRP 4 (b), he would have registered the disputed domain first. Respondent also contends that his tax preparation and web-design services do not compete with Complainant’s services.

 

Respondent further contends that its offer to add a disclaimer to its website located at the disputed domain evidences Respondent’s good faith use of the domain name.  See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that the Respondent was using the domain name in connection with a bona fide offering of goods and services where Respondent was not holding itself out as Complainant given its disclaimer on the website).  But see Ciccone v. Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (finding that “[r]espondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights”); see also Thomas & Betts Int’l v. Power Cabling Corp., Inc., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to Complainant’s website on Respondent’s website).

 

Respondent’s Additional Submission rebuts Complainant’s allegations in Complainant’s Additional Submission, arguing that Respondent did act in bad faith.

 

DECISION

Complainant's request that the disputed domain name <novellconsulting.com> be transferred to Complainant is denied. 

 

 

Daniel B. Banks, Jr., Panelist

 

Dated: October 29, 2001