FileSense, Inc. v. Bogdan Mykhailets
Claim Number: FA1301001483102
Complainant is FileSense, Inc. (“Complainant”), represented by Ronnie Allen Sheppick, Utah, USA. Respondent is Bogdan Mykhailets (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filesense.com>, registered with Moniker Online Services LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on January 31, 2013.
On February 5, 2013, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <filesense.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@filesense.com. Also on February 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 8, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on February 8, 2013.
A timely Additional Submission was received from Respondent and determined to be complete on February 11, 2013.
On February 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
On February 18, 2013 the Panel issued an Order for Additional Submissions and Extending Time for Rendering a Decision. On February 19, 2013, Complainant’s response to that Order was received.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant uses the FILESENSE mark in connection with its SaaS law application, which provides case management services to a wide number of law firms and attorneys.
2. Complainant has filed a pending trademark application with the United States Patent and Trademark Office (“USPTO”) for the FILESENSE mark (Serial No. 85,779,926 filed November 15, 2012).
3. Respondent’s <filesense.com> domain name is identical to the FILESENSE mark.
4. Respondent has offered to sell the <filesense.com> domain name to Complainant at various points in time for varying prices.
5. For over a year and a half, Respondent used the <filesense.com> domain name to resolve to a pay-per-click site featuring advertisements for software products which compete with those offered by Complainant.
6. At times, the disputed domain name also resolved to a “for sale” page which listed Respondent’s contact information.
Respondent made the following contentions:
1. Respondent acquired the <filesense.com> domain name for $350 on January 16, 2013 from a public domain auction hosted at <snapnames.com>.
2. Respondent has never offered to sell the disputed domain name to Complainant, nor has Respondent ever communicated with the third parties who allegedly offered to sell the domain to Complainant.
3. Respondent acquired the disputed domain name for a legitimate purpose, without an intent to target Complainant.
a. Respondent acquired the domain only for the attractiveness of its descriptive elements- the word “file” and the common suffix “sense.”
i. Respondent believed that the term “sense” would be useful in advertising matters related to online file sharing and file storage.
ii. A Google search reveals multiple computer file software utilities called “File Sense.”
b. A legitimate interest may be found in a domain name that “represents a descriptive and non-distinctive combination of two words and is used in connection with the subject matter that term describes.”
c. Upon realizing that it would need a bigger budget before being able to start advertising effectively online, Respondent created a placeholder website at the disputed domain so that Respondent could be easily contacted by file sharing and file storage companies with regard to partnership opportunities.
4. Respondent has not been accused of cybersquatting in the past.
ADDITIONAL SUBMISSIONS
Complainant
1. Complainant regularly checked the WHOIS information for the <filesense.com> domain name, and noticed that the domain itself had the same information until 2013.
2. After Complainant sent Exhibit A, Complainant received communication indicating that the holder of the disputed domain would be transferring the domain to a third party in order to prevent Complainant’s attempts to obtain the domain name.
3. Respondent has not submitted any proof to support its assertion that it has no knowledge of the contested domain’s previous owners.
4. Respondent owns several domain names that are listed for sale. For over a year, the <filesense.com> domain name displayed a “for sale” page which was identical to the “for sale” page displayed at other sites registered by Respondent.
Respondent
1. Complainant’s use of the FILESENSE business name does not entitle Complainant to the <filesense.com> domain name, as multiple companies may share the same business name, and there is no rule stating that a business is entitled to the “.com” domain which best matches its business name.
2. Nothing prevents Respondent from holding multiple domain names.
3. Respondent has never parked the <filesense.com> domain name.
1. Complainant has been engaged in creating an application known as Filesense to be used by attorneys and law firms to provide case management services.
2. To that end, Complainant filed for the registration of a trademark for FILESENSE with the USPTO on November 15, 2012. The trademark has not been registered as of yet.
3. The <filesense.com> domain name was registered on December 9, 2010.
Paragraph 15(a) of 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; and
(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.
The first question that arises is whether Complainant has a trademark or service mark on which it may rely.
Complainant claims that it has a registered trademark, i.e. a trademark registered with the USPTO, namely trademark No. 85, 779,926, registered on November 15, 2012.
That statement is incorrect. Complainant has in fact only filed an application, which is now pending, for the FILESENSE mark (Serial No. 85,779,926 filed November 15, 2012). It is of course well established that a pending trademark application is insufficient to establish rights in a mark for the purposes of the Policy and, accordingly, Complainant’s application does not establish rights in the FILESENSE mark. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”).
It is also well established that common law or unregistered trademark rights are sufficient to show rights in a mark for the purposes of the Policy. However, Complainant did not submit that it relied on or had any common law or unregistered trademark rights in FILESENSE and did not initially submit any evidence from which the conclusion could be drawn that it had any such rights.
It would therefore have been possible for the Panel to dismiss the Complaint on that ground alone. However, Panels have an overriding obligation under paragraph 10 (b) to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. It was for that reason and for the reason that Complainant is not legally represented (although nor is Respondent legally represented) that on February 18, 2013 the Panel issued an administrative order under paragraph 12 of the Rules requesting further statements and documents from Complainant to show if it was relying on a common law or unregistered trademark and, if so, the basis on which that reliance was based.
The Order provided, formal parts omitted, as follows:
Complainant appears to have been incorporated in Delaware on November 2, 2012. The Domain Name was registered on December 9, 2010 and acquired by Respondent on January 16, 2013.
Complainant filed its application for a trademark on FILESENSE on November 15, 2012. At that time, it claimed a first use in commerce from November 16, 2011. It has not yet been registered. Accordingly, on January 16, 2013, when Respondent acquired the domain name, Complainant did not have rights in a registered trademark and apparently does not have such rights today.
As a common law (unregistered) trademark may be sufficient for Complainant to base its claim, the questions arise:
1. whether Complainant is claiming for the purposes of this proceeding that it has a common law or unregistered trademark;
2. whether in fact Complainant had rights in a common law (unregistered) trademark on January 16, 2013 or at any other time.
If Complainant claims that it has a common law (unregistered) trademark in FILESENSE, the Panel needs to see some evidence to prove that point and in particular any documentary evidence that is available to prove it.
Accordingly, Complainant is invited to say if it is claiming in this proceeding that it has a common law (unregistered) trademark for FILESENSE and, if so, it is invited to submit evidence showing:
(a) that the FILESENSE mark has achieved secondary meaning, i.e. a meaning that associates the FILESENSE mark with Complainant as the source of the services offered under that mark;
(b) as Complainant claims that “The name is widely used in our application, this application is used by wide number of Attorneys and Lawfirms to provide Case Management,” Complainant is invited to submit any evidence it can provide that a wide number of attorneys and law firms use the application, the extent of that use and over what period of time;
(c) whether any use has been made of the FILESENSE trademark other than by attorneys and lawfirms to provide case management and, if so, what that use has been, when it was so used and by whom;
(d) whether the name FILESENSE is displayed by advertising or signage at Complainant’s premises, providing photographs if possible;
(e) if Complainant was incorporated in Delaware on November 2, 2012, by whom was the trademark FILESENSE used in commerce from November 16, 2011 until November 2, 2012;
(f) the action taken and the funds expended by Complainant to promote the FILESENSE mark, whether by way of news items, media coverage, advertising, publicity, invoices, packaging or feedback from customers relating to use made by Complainant of the FILESENSE mark;
(g) as to the statement in the Amended Complaint that the domain name “FileSense.com is identical to the Business Name, product name of our SaaS CMS “FileSense,” when was that Business Name formed and where was it registered?
(h) On what date was the website at <file-sense.com> first operational and functioning with content?
Any evidence and submissions in response to this procedural order are to be filed with the Forum and forwarded to Respondent electronically so that they are received no later than 4pm (Minneapolis time) on Friday, February 22, 2013.
Complainant’s reply was received on February 19, 2013 and the reply, formal parts omitted, was as follows :
“FileSense was software that I (Ronnie Sheppick) created in early 2010 under my LLC DMC Services. It was created on my free time and it was created with FileMaker. As time went on I decided that platform for making the program wasn’t a good selection. Because no other businesses at the time were using “FileSense” I decided that the use of a common law (unregistered) trademark was appropriate as the costs involved with having a registered trademark at that point in time didn’t help me protect a product which was being developed and not in use by clients at that time.
Since the creation of said software in FileMaker, Complainant and his agents used “FileSense” as a name of software, the logo, words and form names within the application, and asserts its common law trademark well before 2013 and as early as 2010.
Once we determined the best platform to continue development we moved to purchase domain names, register for trademarks, and have professionally designed graphics.
1. “FileSense” started out being developed under DMC Services LLC a Utah Limited Liability Company in 2010.
2. “FileSense” was transferred from DMC Services and developed continued under Byteknight Computers, a Utah Limited Liability Company Mark #4,197,957 in 2010 -11/02/2012.
3. FileSense Inc. formed as a corporation in Delaware on 11/02/2012 Delaware File Number: 5236675.
4. FileSense Inc requested Trademark of “FileSense” through USPTO 11/16/2012.
5. FileSense Inc requested Copyright of “FileSense” application on 11/06/2012 and was granted Copyright on 11/06/2012 with Date of Creation in 2011.
6. FileSense Inc. hired professional graphics artists to design modern and updated Logo; Icons for “FileSense”, Complainant used the services of 99Designs.com for this design work. See “FileSense Icons 99 Deisgns.pdf” for price paid, proof of work completed and transfer of Copyright from designer Keri Neal to Ronnie Sheppick (FileSense Inc.) on October 8th 2012. Complainant will point out to the panel the name of the contest as “Help FileSense with a new icon or button design”.
7. FileSense Inc. has had beta trials of the software since Early 2011. We have one longstanding relationship with law firm of Lou G Harris Attorney at Law as our primary Beta tester.
8. FileSense Inc. has an Authorize.Net account for our Payment Gateway which was approved on 10/25/2012, Please see “Authorize.net.PDF”.
9. FileSense Inc. has had multiple contracts with workers on Odesk.com, these contracts are for employee’s in the subjects of:
a. HTML5, JAVASCRIPT
b. Graphics Design
c. Entity Framework
d. Advertisement and SEO Optimization
10. Odesk Contracts have been ongoing since 11/26/2012, please see “oDesk Transactions.pdf” this is a statement of account, showing between 11/26/2012 and 2/19/2013 FileSense Inc has paid $7,864.56.
11. FileSense Inc. has an office in Delaware but President, CEO, CFO; Secretary resides in Utah. Development of software is also done in Utah and around the world. Because the Utah office is out of Ronnie Sheppick’s home the City of Kaysville, Utah has local rules and regulations from having “Signage, advertisement in a residential area”.
12. “File-Sense.Com”, “FileSense.Net”, “FileSense.Us” were all activated and first operational and functioning 10/3/12, this is when the newest code was made active allowing for new beta testing companies to login and submit feedback.”
Respondent did not reply to Complainant’s submission in response to the Order.
Complainant’s new evidence makes it plain that it has no registered trademark and that it is relying on a common law or unregistered trademark.
The next task, therefore, that the Panel has to undertake is to see if the new material makes out a common law or unregistered trademark; as the domain name is made up of two clearly generic or descriptive words, “file” and “sense,” the question essentially becomes whether Complainant has established a secondary meaning in the words that associates Complainant with these words, which comprise the alleged trademark. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Having reviewed carefully all of the new material relied on by Complainant, the Panel has concluded that Complainant has not made out a common law or unregistered trademark.
The factors that have particularly influenced the Panel are:
1. that although Complainant asserted in the Complaint and the Amended Complaint that the application it has been working on, carrying the name FILESENSE, has been “used by a wide number of Attorneys and Lawfirms to provide Case Management,” it now transpires that there is apparently only one legal practitioner of whom that can be said; and
2. that, although Complainant was asked specifically what advertising or signage was at its premises and for evidence of news items, media coverage, advertising, publicity, invoices, packaging or feedback from customers relating to use made by Complainant of the FILESENSE mark, which might have shown public identification of Complainant and its trademark with the public, no such evidence has been brought forward. It is true that Complainant has been active with engaging graphic artists and other professionals and it seems generally true that Complainant has been taking steps to set up its business, but none of the information brought forward shows a contact with the public or the commercial community such that it might be said that Complainant is the source of the goods and services offered under the alleged trademark.
Nor is any of the other evidence relied on by Complainant sufficient to establish a common law or unregistered trademark. The Panel therefore concludes that the case for an unregistered or common law trademark has not been successfully made.
The Panel wishes it to be understood that it is not reaching any conclusions on the integrity or probity of the work done by Complainant or the rights of Complainant resulting from the registration of its trademark if and when it is registered. The Panel’s decision is based solely on the narrow confines of the UDRP and the matters that must be proved under that process.
The consequence of the Panel’s findings is that Complainant has failed to satisfy the essential first element of the three elements that it must establish under Paragraph 4(a) of the Policy.
It is therefore not necessary for the Panel to make any findings under the remaining elements of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <filesense.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 11, 2013
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