USADATA, Inc.
v.
Claim Number: FA1002001307329
PARTIES
Complainant is USADATA, Inc. (“Complainant”), represented by William
Bird, of T. Kevin Murtha &
Associates, P.C.,
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <usdatacorporation.com> and <usdatawest.com>, registered with Godaddy.com, 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.
Robert T. Pfeuffer, Senior District Judge as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 10, 2010.
On February 10, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <usdatacorporation.com> and <usdatawest.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 February 17, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 9, 2010 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@usdatacorporation.com and postmaster@usdatawest.com by e-mail.
A timely Response was received and determined to be complete on March 9, 2010.
Complainant’s Additional Submission was received on March 16, 2010.
On
March 18, 2010, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Identical or Confusingly Similar: Policy ¶ 4(a)(i)
Complainant asserts common law rights in the USADATA mark. It has provided evidence of the registration on the supplemental register of its USADATA mark with the United States Patent and Trademark office (“USPTO” Reg. No. 2,545,318 issued March 5, 2002). In an additional submission, the Complainant further points out that it has been using the USADATA mark in commerce since April, 1995 and has spent considerable amounts of money advertising and marketing its USADATA mark. Complainant registered its USADATA.COM domain name on February 28, 1995 in connection with providing marketing information and marketing research reports to marketing companies. In support of its allegation that the domain names in dispute are identical or confusingly similar to its USADATA mark, Complainant points out that the disputed domain name removed the letter “a” from Complainant’s USADATA mark, then adds the generic terms “corporation” and “west” and adds the generic top level domain (“gTLD”) “.com”. Complainant contends that these additions are insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i).
Rights and legitimate interest: Policy ¶4(a)(ii)
Complainant must first make a prime facie case showing that Respondent
does not have rights or legitimate interests in the subject domain and this
burden is light. Complainant alleges
that it has satisfied its burden and shifted the burden to Respondent to show
that it does have rights or legitimate interests in the subject domain
names. Complainant alleges Respondent is
not commonly known by the disputed domain names. It alleges that the WHOIS information lists
the registrant for the <usdatacorporation.com>
as “
Complainant contends in its original complaint and additional submission that the Respondent, a direct competitor of Complainant, is using the confusingly similar disputed domain name to disrupt Complainant’s business. It further says, because of the confusingly similarity internet users may purchase mailing lists, sales leads and marketing services from Respondent rather than Complainant and that as such these actions constitute a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant further contends that the Respondent is using the disputed domain name to intentionally attract Complainant’s business and commercially benefits from the sales of goods and services on the confusingly similarly disputed domain name.
B. Respondent
Respondent complains that copies of the complaint received by Respondent and its counsel did not include all the materials identified in Complainant’s “Table of Contents” as being annexed to the Plaintiff’s exhibit. It specifically claimed that Exhibits “A- H” were not attached to the complaint and argues that Complainant cannot rely upon any of these exhibits in support of its position. Respondent further asserts that Complainant has no rights in the USADATA mark because the mark was registered on the Supplemental Register rather than the Principle Register and that such registration on the Supplemental Register conveys no trademark or service mark rights upon the register.
Respondent also argues that the domain names are not confusingly similar to Complainant’s mark because of the addition of the words “corporation” and “west” serve to distinguish the disputed domain names from Complainant’s mark.
Respondent contends that the disputed domain names are comprised of common and generic terms and therefore cannot be deemed confusingly similar to Complainant’s mark. This argument will be addressed in the Panel’s findings in connection with Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) as it is not applicable to a determination as to whether or not Policy ¶4(a)(i) as been violated.
Respondent alleges that its <usdatacorporation.com> mark is and has been prominently used on the disputed domain name since June, 2005 and that this is evidence sufficient to establish that Respondent is commonly known by the disputed domain name. It further argues that it is making legitimate use of the disputed domain name off of data bases featuring mailing lists, direct marketing services, advertising services, business marketing services, and business data services. It alleges that such use of the disputed domain names is a bona fide offering of goods and services pursuant to Policy’s ¶ 4(c)(i).
Respondent asserts that terms <usdatacorporation.com> and <usdatawest.com> domain names are common and generic and therefore, Complainant does not have an exclusive monopoly on the terms for use on the internet.
Respondent urges the Panel to conclude that mere assertions of bad faith are insufficient for a complainant to establish violations of Policy ¶ 4(a)(iii), that unless supporting facts and specific examples are provided, the Panel could not conclude that the Respondent acted in bad faith.
Respondent also asserts that it is using the disputed domain name to compete with Complainant and not to disrupt the Complainant’s business. It claims that such competition is fair and is not evident of bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent argues that there is no evidence of any intentions on its part to intentionally attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
Respondent contends that the <usdatacorporation.com> and <usdatawest.com> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s USADATA mark. It further contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith.
Respondent asserts that Complainant has waited five years before making any complaint or claim in respect to the disputed domain names. Also, while laches by itself, is not a defense to a complaint brought under the policy, such delay in seeking relief is a relevant factor to be considered in a determination of whether the Respondent has been able to build up a legitimate rights in the domain name in the interim and whether Respondent is using the domain name in bad faith.
C. Additional Submissions
Both Complainant and Respondent have submitted extensive additional submissions, including many exhibits attached for consideration by the Panel. Each of these additional submissions, together with their additional exhibits have been carefully considered by the Panel and found to be most helpful in its ultimate decision.
FINDINGS
The Panel finds that the disputed domain names are in fact confusingly similar.
The Panel finds that both parties have established rights and legitimate interests in the disputed domain name.
The Panel finds that the evidence does not support Complainant’s assertion that the Respondent has registered the disputed domain names in bad faith nor used them in violation of Policy ¶ 4(a)(iii). The Panel is aware that the doctrine of laches is not a defense in itself under the policy, may be considered as relevant evidence in a determination of whether or not the Respondent has been able to build up a legitimate right in the domain name in the interim and whether or not Respondent is using the 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.
Respondent has argued that Exhibits “A-H” were not attached to the complaint, therefore, Complainant could not rely on any of these exhibits in support of its position. There is no evidence in the file to support this allegation and in fact, to the contrary, the National Arbitration Forum has asserted in its letter of transmittal that all proper notifications to the parties, including all pleadings and exhibits, were forwarded to the parties in a timely manner. Likewise, it has assured the Panel and the Panel so finds that all supplemental pleadings submitted for its consideration were filed in a timely manner. The Panel therefore rejects the Respondent’s allegation with regard to Exhibit’s A-H.
The Respondent has further alleged that registration on the Supplemental Register conveys no trademark or service mark upon the registry. However, the Panel has concluded from the evidence that Complainant has established common law rights in its USADATA mark by registration on the Supplement Register of it’s USDATA mark with the USPTO on March 5, 2002, and in fact, has provided evidence that the Complainant has been using this mark since it registered its USADATA .COM domain name on February 8, 1995 in connection with providing marketing information and marketing research reports to marketing companies.
The Panel, therefore finds that the Complainant has provided sufficient evidence to establish its common law trademark rights under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Gruner + Jahr Printing & Publ’g Co. v. Internet Billions Domains, Inc., FA 114663 (Nat. Arb. Forum Sept. 3, 2002) (holding that the complainant’s five USPTO registrations incorporating its HOMESTYLE mark on the Supplemental Register and its use of the mark as part of the title of a magazine in the U.S. since as early as January 8, 1992—despite the magazine repeatedly changing titles—was sufficient to grant standing under the UDRP).
It
is alleged by the Complainant that the disputed domain names remove the letter
“a” from Complainant’s USADATA mark and add the generic terms “corporation” and
“west” and add the generic top-level domain name (“gTLD”) “.com.” The Panel finds that the deletion of a
letter, the addition of a generic term and the addition of a gTLD are not
enough to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See
Myspace, Inc. v. Kang, FA 672160
(Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain
name was confusingly similar to the complainant’s MYSPACE mark and the slight
difference in spelling did not reduce the confusing similarity); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat.
Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark); see also Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name
is irrelevant to a Policy ¶ 4(a)(i) analysis).
Policy
¶ 4(a)(i), is that part of the policy which considers only whether Complainant
has rights in the mark and whether the disputed name are confusingly similar to
Complainant’s mark. Therefore,
Respondent’s contention that the disputed domain names are comprised by common
and generic terms and as such cannot be found to be confusingly similar is
irrelevant to a finding concerning Policy ¶ 4(a)(i). It will therefore be discussed below. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual
word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Rights and Legitimate Interests Policy ¶ 4(a)(ii)
The Panel finds that Complainant has discharged its obligation to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and has shifted the burden to Respondent to show that it does in fact does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that
Respondent is not commonly known by the disputed domain names both in its
complaint and its additional submissions.
While the WHOIS information lists the registrant’s disputed domain name
for the <usdatacorporation.com>
as “K2, Incorporated,” there is ample evidence in the records to the
contrary for the Panel to find that the Respondent is commonly known by the <usdatacorporation.com> disputed
domain name pursuant to Policy ¶ 4(c)(ii) and further that the disputed domain
name <usdatawest.com> was registered by “US Data Corporation,” and that
under the circustances of this case and the evidence presented herein, the fact
that Respondent is not commonly known by the disputed domain name should not be
taken as a circumstance against it. The
extensive evidence Respondent has presented that it was commonly known by the
disputed domain name prior to its registration of the disputed domain name, is
persuasive.
Although the Panel has found that Complainant has esablished a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii), it further finds that the evidence presented by Respondent overcame the Complainant’s burden by showing it was making a bona fide offering of goods and services at the disputed domain name. Respondent has presented sufficient evidence to show that its US Data Corporation mark is and has been prominently used on the disputed domain name since June, 2005. The Panel finds that this is sufficient evidence to establish that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names); see also Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (finding that the respondent was commonly known by the <lexusmichaels.com> domain name because the respondent’s stage name was LEXUS MICHAELS).
Respondent asserts
it is making legitimate use of the disputed domain names to offer databases
featuring mailing lists, direct marketing services, advertising services,
business marketing services and business data services and that it has been
making use of these domain names in offering these services since June, 2005. The Panel finds that Respondent has provided
sufficient evidence of its marketing business and also finds that Respondent’s
use of the disputed domain names is a bone
fide offering for goods or services pursuant to Policy ¶ 4(c)(i). See
Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum
Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by
showing it was making a bona fide offering
of goods or services at the disputed domain name); see also Digital Interactive
Sys. Corp. v. Christian W, FA 708968
(Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to
satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence
to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i)).
Respondent has further argued that the terms of the <usdatacorporation.com> and <usdatawest.com> domain names are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees. It finds that the Respondent can establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel has concluded from a review of the evidence that the Complaint has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel has been persuaded by the evidence that Respondent has rights or legitimate interests in the <usdatacorporation.com> and <usdatawest.com> domain names pursuant to Policy ¶ 4(a)(ii) and further finds that the Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent has asserted that it is
using the disputed domain names to COMPETE with Complainant and not to disrupt
Complainant’s business. The Respondent
alleges that such competition is fair and is not evidence of bad faith
registration and use under Policy ¶ 4(b)(iii).
The Panel so finds. The Panel
therefore concludes that the Respondent did not register or use the disputed
domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See
Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the
domain name <seminarsuccess.com> to be generic and that the respondent
registered and used the domain name in good faith “because Respondent selected
the name in good faith for its web site, and was offering services under the
domain name prior to the initiation of the dispute”); see also Election Systems
& Software, Inc. v. Stewart, FA 805224 (Nat. Arb. Forum Nov. 14, 2006)
(Where the respondent registered the disputed domain name to reflect one of the products available from Respondent,
the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)).
Respondent has argued that there is no evidence of any intention on its part to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark. The Panel is so persuaded and finds that Respondent has not registered or used the disputed domain name in violation of Policy ¶ 4(b)(iv). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
Respondent contends that the <usdatacorporation.com> and <usdatawest.com> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s USADATA mark. Additionally, it says that registration and use of domain names comprising such common terms is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain names now in dispute contains such common terms. The Panel therefore concludes that Respondent did not register or use the <usdatacorporation.com> and <usdatawest.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The Respondent asserts that the Complainant has waited five
years before making any claim in respect to the disputed domain names, and
although not a defense to a complaint brought under the policy, it should be
considered by the Panel as evidence for Respondent in its considerations of the
elements of the policy. The Panel
understands that the doctrine of
laches is no defense but has chosen to consider Complainant’s long delay in
asserting any rights to the disputed domain names as a factor against
Complainant. The Panel therefore finds
that this evidence is relevant to a determination of whether or not Respondent
has been able to build up legitimate rights in the domain name in the interim
and whether or not Respondent was using the domain name in bad faith. See Square Peg
Interactive Inc. v. Naim Interactive Inc.,
FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is
not a defense to a complaint brought under the Policy, Complainant's delay in
seeking relief is relevant to a determination of whether Respondent has been
able to build up legitimate rights in the Domain Name in the interim, and
whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v.
Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a
defense in itself under the Policy, the absence of any complaint over a long
period of time in which domain names are in active use can suggest that such
use does not give rise to a serious problem.”).
DECISION
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief sought shall be DENIED.
Accordingly, it is Ordered that the <usdatacorporation.com> and <usdatawest.com> domain name NOT be TRANSFERRED from Respondent to Complainant.
Robert T. Pfeuffer,
Senior District Judge, Panelist
Dated: April 1, 2010
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