National Arbitration Forum

 

DECISION

 

AccountNow, Inc. v. Platen Company

Claim Number: FA0711001105710

 

PARTIES

 

Complainant is AccountNow, Inc. (“Complainant”), represented by Brian R. Coleman, of Perkins Coie LLP, 101 Jefferson, Menlo Park, CA 94025.  Respondent is Platen Company (“Respondent”), 113 Blue Star, Ste 3, San Antonio, TX 78204.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

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

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 1, 2007.

 

On November 1, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <accountnow.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 5, 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@accountnow.com by e-mail.

 

A Response was received and determined to be deficient on December 17, 2007.  It has nevertheless been considered by the Panel.

 

An Additional Submission was received from Complainant on December 19, 2007 and from Respondent on December 27, 2007.  In accordance with the National Arbitration Forum Supplemental Rules for Uniform Domain Name Resolution Policy, these submissions were determined to be timely.

 

On December 27, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant AccountNow, Inc. provides financial services for consumers who do not have established credit or traditional banking relationships.  Since 2006 Complainant has held a registered trademark for ACCOUNTNOW with the United States Patent and Trademark Office.  It has used the name AccountNow, Inc. in connection with these services since 2005. 

 

Complainant contends that the domain name in dispute is confusingly similar to its ACCOUNTNOW mark.  Complainant contends that Respondent Platen Company is not affiliated with Complainant in any way and is not authorized to use Complainant’s mark.    Because Respondent has not been licensed or authorized to use Complainant’s mark, Complainant contends that Respondent lacks rights or legitimate interests in the domain name.

 

Finally, Complainant contends the domain name was registered and used in bad faith.  Complainant asserts that it is “extremely unlikely” that Respondent “simply devised the Domain Name on his own.”   Complainant contends that Respondent’s bad faith is demonstrated by the fact that the domain name links to other commercial entities offering services that compete with those provided by Complainant.   Furthermore, Complainant asserts that Respondent’s site contains hyperlinks having names different from the hyperlinked addresses to which the links resolve. 

 

B.     Respondent

 

According to Respondent Platen Company the disputed domain name was initially registered in 1999.  Respondent purchased the domain name in 2003.  Respondent states that its various partnerships needed a comprehensive records system and it began using the name Accountnow as the entity to provide that structure.

 

Respondent states that while it was developing its system in the late 1990’s it saw that the <accountnow.com> name was taken.  Hoping that the then owner, who was not actively using the domain name, would sell the name (which it did in 2003), Respondent registered other similar domain names. 

 

Respondent states that to avoid any confusion with Complainant’s mark, the domain name will be used only for “outbound traffic” and “sending promotional information to selected prospects.”    Respondent further states that Complainant has engaged in bad faith because Complainant registered its trademark despite the fact that two similar domain names (“Accountnow-1.com” and “accountnow.cc”) were already registered to Respondent.

 

Respondent denies that any links on its site resolve to competitors of Complainant.

 

C.     Additional Submissions

 

Complainant states that the domain name is “parked” with sedo.com where it contains links to other financially-related businesses.   Because neither Respondent nor the owner of the domain name prior to Respondent have actually used the domain name, Complainant alleges that Respondent can have no legitimate rights or interest in the domain name.   According to Complainant using a mark of another to provide links to a competitor is evidence of bad faith where the domain name resolves to a “parked” site.

 

Respondent denies that it has ever had dealings with sedo.com and does not know how its domain name came to be parked with sedo.com.  Respondent denies that it has given permission to anyone to “point Respondent’s domain to the website available at www.accountnow.com and has derived no revenue from the advertising found” on that side.

 

Respondent acknowledges that it is currently not using the domain name and that it only plans to use it for its pending business.

 

FINDINGS

 

Respondent acquired the domain name on December 18, 2003.  Complainant first used its mark ACCOUNTNOW in commerce in 2005 and was issued a trademark for ACCOUNTNOW by the United States Patent and Trademark Office (“USPTO”) in 2006 (Reg. No. 3,175,043 filed October 6, 2004 and issued November 21, 2006). 

 

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

 

Respondent acquired the domain name on December 18, 2003,[1] well over a year before Complainant acknowledges it first began consistently using the mark ACCOUNTNOW and before Complainant filed its registration for the ACCOUNTNOW mark with the USPTO.   It has been consistently held that a complaining party may not satisfy the requirements of Policy 4(a)(i) if complainant’s registration and rights do not predate the respondent’s registration of a similar domain name.  Weil Lifestyle, LLC v. Vertical Axis, Inc., FA 926455 (Nat. Arb. Forum May 9, 2007)(Policy 4(a)(i) not satisfied where respondent registered its domain name one month before complainant’s first use in commerce of its mark);  Transpark LLC v. Network Adm'r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (the complainant failed to satisfy Policy 4(a)(i) because the respondent's domain name registration predated the complainant's rights in its mark by nearly two years); Phoenix Mort. Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (Policy 4(a)(i) necessarily implies that the complainant's rights predate the registration of the domain name); contra Digital Vision, Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001). 

 

Registration and Use in Bad Faith

 

The record supports Respondent’s contention that it registered the <accountnow.com> domain name prior to Complainant gaining any rights in the ACCOUNTNOW mark.  Policy ¶ 4(a)(iii) requires not only bad faith use, but bad faith registration as well.  Because Respondent registered the domain name before Complainant acquired rights in its mark, Complainant is unable to establish that Respondent registered the domain name in bad faith pursuant to Policy 4(a)(iii).  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel).

 

DECISION

 

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. 

 

 

 

Bruce E. Meyerson, Panelist
Dated: January 10, 2008

 

 

 

 

 

 

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