DECISION

 

ONTRACK Data International, Inc v. Barbara Drewett

Claim Number: FA0109000099767

 

PARTIES

The Complainant is ONTRACK Data International, Inc, Eden Prairie, MN (“Complainant” or “ONTRACK) represented by Kent Anderson.  The Respondent is Barbara Drewett, Wimberley, TX (“Respondent” or “Drewett”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

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

 

PANEL

The undersigned certifies that 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.

 

Anne M. Wallace, Q.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 21, 2001; the Forum received a hard copy of the Complaint on September 24, 2001.

 

On September 24, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <datatrail.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 24, 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@datatrail.com by e-mail.

 

A timely response was received and determined to be complete on October 15, 2001.

 

Additional Submission from Complainant received October 22, 2001.

 

On October 25, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as Panelist.

 

Respondent filed additional submission on October 31, 2001.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

The following paragraphs summarize the evidence and submissions of the parties. While these are only summaries, I have reviewed both parties’ submissions in detail and I have considered the cases referred to in those submissions. 

 

A. Complainant

Identical or Similar

Complainant, founded in 1985, provides data availability software and service solutions, helping customers protect, manage, recover and discover their valuable data. Complainant alleges that it has used and continues to use the mark DATATRAIL in connection with its electronic services. Specifically, Complainant says it has been using the mark since at least May 25, 2001. Complainant filed a trademark application for DATATRAIL on August 1, 2001.

Complainant says these circumstances create common law rights in the mark. Respondent registered the domain name <datatrail.com> on July 2, 1997. Complainant says this domain is identical or confusingly similar to its DATATRAIL trademark.

Rights or Legitimate Interest

Complainant says Respondent has no rights or legitimate interest in the domain name because Respondent has made no use of the domain name nor made any demonstrable preparations to use the domain name, and that Respondent’s passive holding of the disputed domain name supports a finding that Respondent has no rights or legitimate interests in respect to the <datatrail.com> domain name.

Complainant further says that even if Respondent is using the DATATRAIL name in connection with a business, the use of the identical domain name to offer services competing with Complainant’s business is not a legitimate or bona fide use under the Policy 4(c)(i).

Complainant further alleges that Respondent is not commonly known by the <datatrail.com> term. Because Complainant’s mark is fully incorporated into the domain name, it would be reasonable for Internet users to assume that the <datatrail.com> name is operated or sponsored by Complainant.

Complainant further says that Respondent has no legitimate interests in the domain name because Respondent has made no use of the domain name in question other than to use the domain name as a bargaining device for profit. Complainant’s evidence is that in response to Complainant’s inquiry to purchase the domain name, Respondent offered to sell the domain name for $45,000. Complainant says this reveals no fair or legitimate interests in the domain name.

Complainant says for all these reasons, Respondent has no legitimate reason for using Complainant’s mark as its domain name.

Bad Faith

Complainant alleges that Respondent’s continuous non-use (passive holding) of the domain name constitutes bad faith.

Complainant further alleges that Respondent registered the domain name primarily for the purposed of selling the domain name registration to Complainant who is the owner of the mark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant’s employee, Cindy Moen sent an e-mail to Respondent seeking transfer of the <datatrail.com> domain name and offering to pay $1,000 for the name. Respondent replied with an offer to sell the domain name for $45,000 ($30,000 cash and $15,000 in stocks). Complainant says Respondent’s offer reveals Respondent’s bad faith registration and use of the domain name.

 

B. Respondent

Identical or Confusingly Similar

Respondent says that the UDRP was established to permit the expedited disposition of clear abuses and that such is not the case here. Respondent contends that Complainant has not provided any proof, evidence or substantiation to prove that the Complainant has any trademark rights in the word DATATRAIL. Complainant makes an unsupported allegation stating that Complainant has used the word, but there is no description of the length of time that the word has been used or any evidence or proof of the use or extent of the use. While a trademark application has been made, this does not create rights as there is no guarantee that the trademark registration will be granted.

Respondent argues that the absence of definitive proof of trademark rights is fatal to Complainant’s application.

Rights or Legitimate Interest

Respondent has been operating her business and using the name DATATRAIL for the business since January of 1997. Evidence was provided to show that Respondent was actively operating her business and that it was known as DATATRAIL. There is evidence from Respondent and her spouse, as well as a private investigator and other clients who have used Respondent’s services. The evidence also shows that Respondent has established a domain name hosting arrangement permitting Respondent to send and receive e-mail messages with the address of @datatrail.com, and that Respondent obtained an Assumed Business or Professional Name Certificate (d.b.a. certificate) in Hays County, Texas, on July 21, 1999 for the name Datatrail. Respondent further provided a bank statement from August 31, 1999, showing the Respondent was doing business under the name of Datatrail.

Based on this evidence, Respondent contends that Respondent was actively operating her business and that it was known as Datatrail. Accordingly, this proves that Respondent has rights and legitimate interests in respect of the domain name for purposes of the UDRP process, and that Complainant has not met the burden of proving that Respondent does not have rights or legitimate interest in the domain name.

Bad Faith

Respondent contends that Complainant must prove both bad faith registration and bad faith use to meet this element. Respondent denies passive use as alleged by Complainant. Respondent says the evidence of the hosting arrangement for the @datatrail.com e-mail address is evidence of use. Respondent further says that the UDRP merely says that passive holding can support a determination of bad faith, not that it is conclusive evidence of bad faith.

With respect to Complainant’s allegation that Respondent registered the name primarily for the purpose of selling the domain name, Respondent says that UDRP decisions have consistently held that when a respondent only considers the selling of a domain name after being contacted by a complainant, that is not sufficient evidence of bad faith.

Respondent contends that in this circumstance, there is no evidence at all to ground an argument of bad faith. Neither Respondent nor her business has registered or acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name to the Complainant, nor was the name registered to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name, nor was the registration done for the purpose of disrupting the business of the Complainant or any competitor. Lastly, Respondent has not attempted to attract, for commercial gain, Internet users to a web site or other on-line location by creating a likelihood of confusion with Complainant’s alleged mark. Respondent further argues that Respondent has never sold or attempted to sell any domain name.

 

C. Additional Submissions

Complainant

Complainant made an additional submission which I have considered in coming to my decision because it raised matters of importance to a determination of the case and it would not have been fair to disregard the submission.

Complainant submitted evidence of its use of DATATRAIL in its business, including, for example, promotional brochures. Complainant alleges extensive use of the mark since May 25, 2001, and further argues that the existence of the trademark application reveals that Complainant has rights in the mark.

With respect to rights or legitimate interest, Complainant says Respondent cannot claim rights or legitimate interest because Respondent is not using the domain name in connection with a bona fide offering of goods and services nor has made demonstrable preparations to use the domain name. In support of this contention, Complainant says that all the evidence submitted by Respondent is from the past and that no current evidence (i.e. from any later than 1999) was provided by Respondent to show any recent business activity in connection with the <datatrail.com> mark. Complainant says this shows Respondent’s business activity has ceased, if it ever existed at all. As such Respondent cannot claim to be offering any bona fide services in connection with the domain name.

Complainant further says that Respondent has not activated the website located at <datatrail.com>, nor has Respondent revealed any demonstrable preparations to use the domain name in the future. Complainant further says the web hosting agreement is not sufficient evidence of use and that in any event, the web hosting agreement is a minimal act and does not really show any demonstrable intention to use the domain name in connection with the <datatrail.com> web site.

Complainant further says Respondent is not commonly known by the <datatrail.com> domain name and that this is evidenced by entering DATATRAIL into the GOOGLE search engine, the results of which show 80 hits, none of which reference Respondent, with similar results using MSN’s search engine. Complainant repeats that none of Respondent’s evidence shows that she is currently known by the domain name or the mark contained therein. Complainant says that if Respondent was ever known by the domain name, her association with the domain name has ceased, and thus Respondent cannot claim rights or legitimate interests in the domain name under Policy 4(c)(ii).

With respect to bad faith, Complainant’s additional submission reasserts that Respondent’s passive holding of the domain name is bad faith. Complainant also repeats its arguments with respect to Respondent’s offer to sell the domain name to Complainant and says the offer to sell in and of itself constitutes bad faith registration and use, that it is of no concern that Respondent’s offer to sell the domain name occurred after being contacted by Complainant regarding purchase, and that Respondent’s bad faith is evident in that she offered to sell the domain name with knowledge of Complainant’s DATATRAIL mark.

Even though Complainant’s additional submissions are somewhat repetitive of Complainant’s initial submissions, I have considered all material submitted.

Respondent

Respondent made an additional submission to respond to Complainant’s additional submission. I have considered this submission in coming to my decision because it raised matters of importance to a determination of the case and because it would not have been fair to Respondent to refuse to allow Respondent to reply to allegations in Complainant’s additional response.

Respondent says Complainant has submitted several marketing items, but there is no documentation to show the “extensiveness” of usage. More importantly, Complainant does not provide any representations with respect to the time period during which the items have been used. Complainant’s only statement with respect to this issue is the statement that “at least as early as May 25, 2001, ONTRACK began use of the DATATRAIL mark in connection with its electronic delivery services.” Accordingly, the only conclusion that can be reached from a review of the evidence and submissions is that Respondent used the word DATATRAIL in her business at least 22 months earlier than Complainant’s use of the word.

Respondent submitted evidence of current usage of DATATRAIL in her business through several affidavits filed with this submission. Respondent explained that earlier evidence had been intended to show previous use of DATATRAIL to show that Respondent had been using the name before Complainant ever started to use it. Evidence of current use included five affidavits in which deponents swear that Respondent continues to carry on her business under the name DATATRAIL and that she regularly passes out DATATRAIL business cards whenever the opportunity presents itself.

With respect to Complainant’s allegations that Respondent has made no demonstrable preparations and use of the domain name, Respondent filed affidavit evidence to show that Respondent has entered into a web hosting agreement which has permitted her to send and receive e-mail with the address @datatrail.com. Respondent and others further swear that Respondent developed a business plan to obtain funding for the cost of a full-scale website and discussed the business plan with her father to request funding from him. This occurred in 1997. Her father was killed in a plane crash in September, 1997. Deponents further swear that Respondent has placed ads in local newspapers and that she has purchased software to develop a web site (Web Page 5.0 construction kit). Due to financial and personal issues following on the death of her father, Respondent’s progress with the business plan and website development has been slow. Respondent’s current business involves Internet searches, research, archiving and trouble-shooting computer systems. She continues to perform these services under the name DATATRAIL.

 

FINDINGS

For the reasons set out below, I find that the domain name <datatrail.com> is identical to or confusingly similar to trademark rights of Complainant, albeit probably very weak rights, but that Respondent has rights and legitimate interests in the name and that Respondent has not acted 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

There is no question that with the exception of the .com extension, <datatrail.com> is identical to the DATATRAIL mark in which Complainant claims to have rights. The real question under this element is whether Complainant has established any rights to the DATATRAIL mark. Complainant contends that it began use of the mark around May 25, 2001. Complainant submitted evidence of use of the mark in promotional material, but has not provided evidence of when and how and to what extent the mark has been used. Complainant has filed a trademark application on August 1, 2001. While the evidence is weak and Complainant’s rights may be equally as weak, I am satisfied that for purposes of this proceeding that Complainant has established the first element.

 

Rights or Legitimate Interests

­Complainant contends that Respondent has made no use of the domain name nor has Respondent made any demonstrable preparations to use the domain name and that Respondent’s passive holding of the domain name supports a finding that Respondent has no rights or legitimate interests.

The evidence before me establishes that Respondent registered the domain name on July 2, 1997, almost four years before Complainant even started using the DATATRAIL mark. Respondent uses the name in connection with a business called DATATRAIL for which she holds a valid business registration. She has entered into a web hosting agreement and uses @datatrail.com for e-mail. She prepared a business plan for development of the website and the business and has purchased website development software to move ahead with a web site. This evidence establishes demonstrable preparations to use the domain name.

Complainant suggests that the use of a domain name identical to a name by which Complainant already offers services is not a legitimate use. Suffice it to say Respondent has been using the name DATATRAIL for four years longer than Complainant so it does not lie in the mouth of Complainant to say Respondent is using a name by which Complainant does business. Indeed, while it is not for me to decide in this case, Respondent may well have stronger rights in the DATATRAIL name than does Complainant.

Complainant argues that Respondent is not commonly known by the name <datatrail.com>. The evidence establishes that Respondent is known by DATATRAIL.

Complainant alleges that the only use of the domain name has been to offer it for sale to Complainant. The evidence, as outlined above, establishes otherwise. The offer to sell the domain name came after Complainant approached Respondent. Complainant neglected in its evidence to file the e-mail message in which Complainant offered to purchase the name. Respondent’s reply makes it clear that she has considered a number of factors in coming to her offer to sell for $45,000. This included the fact that Respondent already had a business under the name DATATRAIL as well as Respondent’s knowledge, from having done some research, on the size of Complainant and extend of Complainant’s business. Respondent’s message to Complainant is nothing more than a response to a request by Complainant that Respondent sell the domain name. It does not affect the legitimacy of the rights of Respondent to the domain name.

I find Respondent has rights and legitimate interest in the domain name <datatrail.com>.

 

Registration and Use in Bad Faith

­While in light of my findings of legitimacy, I need not go on to deal with the question of bad faith, I will set out my views on this element as well. To succeed on this element a complainant must demonstrate both bad faith registration and bad faith use.

With respect to the registration, I fail to see how Respondent could have registered the name in bad faith when she registered the domain name for use in a legitimate business which she carried on and that registration occurred four years before Complainant even began using the mark.

I have already discussed Complainant’s allegations of passive use above. I will not repeat them here. Respondent has in fact made use of and intends to continue with use of the domain name and bad faith cannot be established on this ground.

Complainant says Respondent’s offer to sell the domain name for $45,000 is evidence of bad faith. Respondent registered her domain name almost four years before Complainant began using the DATATRAIL mark. It is clear that Complainant contacted Respondent to offer to buy the domain name even before Complainant began using the mark. While the Complainant’s e-mail in which the offer was made was not submitted in evidence and while Complainant refers to the e-mail as having been sent “at the end of May 2001”, the e-mail would obviously have predated its response which is dated May 23, 2001. This means that Complainant’s e-mail offering to buy the domain name from Respondent happened before Complainant even began using the DATATRAIL mark.

One can easily infer from Respondent’s May 23, 2001 e-mail communication that in making her offer Respondent was considering the fact that she had an already established business using the DATATRAIL name and that Complainant would essentially be purchasing her business identity. She was also considering the financial capabilities of Complainant, and it appears the fact that Respondent may well have trademark rights she would be giving up if she sold the name. The offer appears to be nothing more than a well-thought-out business offer in which the Respondent was willing to give up its rights to the name DATATRAIL.

In all these circumstances, Respondent’s offer to sell the domain name cannot be considered to be evidence of bad faith within the Policy.

 

DECISION

I hereby dismiss the within complaint and find in favour of Respondent.

 

 

Anne M. Wallace, Q.C., Panelist

 

Dated: November 2, 2001

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page