ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. The Parties and Contested Domain Name:
File number : AF-0121
2. Procedural History:
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 9th, 2000. The hardcopy of the Complaint Form was received on February 18th, 2000. Confirmation of the wire payment was received on February 17th, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry lead the Clerk of eResolution to the following conclusion: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information including the billing contact. The Contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on February 25th, 2000. That date is the commencement date of the administrative proceeding.
On February 25th, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On March 16th, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on March 16th, 2000.
On March 17th, 2000, the Clerk's Office contacted Mr. Mads Bryde Andersen, and requested for him to act as panelist in this case.
On March 20th, 2000, Mr. Andersen, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On March 20th, 2000, the Clerk's Office forwarded a user name and a password to Mr. Andersen., allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On March 20th, 2000, the parties, the Registrar and ICANN were notified that Mr. Andersen had been appointed and that a decision was to be, save exceptional circumstances, handed down on April 4th, 2000.
3. Factual Background
Both parties to the case are domiciled in the United States.
Complainant, Shelley Harrison, has registered the trademark LAUNCH PAD in the United States (number 2,056,737) for consulting and research services, which are rendered to businesses for the purpose of improving their advertising, marketing and sales activities. The trademark registration is made for the international trademark Class 35 in the principal register of the United States and with a registration date of April 29, 1997. The registration is based on a first use in commerce of December 20, 1994.
Complainant is the owner of the company Launch Pad which company she has allowed to use the trademark. The company is in the business of advertising, marketing and other consulting services to assist start-up companies as well as established companies and individuals in improving their sales and marketing activities under the said trademarks. Complainant says that her company has established a strong reputation and goodwill in its name and trademark through extensive use in interstate, intrastate and Internet services and promotion.
Respondent, Coopers Consulting, Inc., is a New Jersey company in the business of Internet-based computer applications for businesses and individuals. "LaunchPad" is Respondent's long-term business name. On March 17, 1995 Respondent registered that name as the domain name for its services under the .com toplevel domain. There is no information in the documents produced in the case that Respondent made any trademark registration for this name, neither in the United States nor in other jurisdictions. On the other hand, as noted below, Respondent has shown that similar word marks as "launchpad" have been registered for other businesses than that of Complainant's.
In November 1997, when Complainant planned its Internet presence, she found out of Respondent's launchpad.com domain name registration. Instead, she registered LPAD.COM from which Internet domain she presently conducts her business. She now requests that the ownership of the domain name at issue be transferred to her company, Launchpad, Inc.
4. Parties' Contentions
Complainant claims that the LAUNCH PAD mark is nearly identical to the domain name LAUNCHPAD.COM - the only difference being the lack of a blank space between the words LAUNCH and PAD. Since it is widely and commonly known that a domain name cannot have blank spaces in it, any consumer or business person would assume that the domain is to be associated with the mark LAUNCH PAD. Complainant therefore assumes that her clients are wrongfully led to LAUNCHPAD.COM.
Complainant also claims that the services offered for sale at LAUNCHPAD.COM are similar to the services which her company offers. They are both within the market for business services aimed at improving both business and personal image and productivity, she asserts. She assumes that her company has experienced substantial confusion in the market place due to the LAUNCHPAD.COM domain name registration.
Furthermore, Complainant claims that Respondent has no legitimate interest in the domain name for services in International Class 35 since the trademark LAUNCH PAD has been on the principal register of the United States starting in April, 1997.
Finally, Complainant asserts that Respondent's registration of launchpad.com is made in bad faith as defined in the Anti Cybersquatting Consumer Protection Act of 1999 (ACTPA), cf. 15 U.S.C. § 1125(d). In sub-paragraph (V) this provision makes reference to cases where the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site. Complainant claims that by using the same domain name as the consumer would expect the mark owner to use, i.e. LAUNCHPAD.COM, Respondent continously diverts consumers from LPAD.COM to LAUNCHPAD.COM, since LPAD.COM is not an obvious derivative of the owner's mark, and would probably only be found through use of a search engine.
In response, Respondent has made the following arguments:
Respondent denies that the trade marks owned by Complainant gives her the right to possess the domain name in dispute. Based on a search of the U.S. Patent and Trademark Office database, Respondent has produced a list of registrations of the word «launchpad» and its derivatives (obtained by including a space or by various capitalizations) that indicates several other holders of «launchpad» trade marks. As the Internet top level domain is presently organised, only one principal domain can be registered as «launchpad.com». The other seventeen holders of valid federal trademark registrations together with the unlimited number of other legitimate uses of the term «launch pad» in the world, will therefore have to select other domain names if they wish to maintain a presence on the Internet.
Secondly, Respondent asserts that the term "launch pad" is generally accepted as a generic term in the English language.
Thirdly, Respondent denies that the trade mark registration of Complainant in Class 35 gives her an exclusive right to use the Launcmark word mark within that class. Despite Complainant's registration of the term "Launch Pad" (in the distinctive format described in complainant's registration), the United States Patent and Trademark Office has permitted the registration of the word mark "LAUNCHPAD PRODUCTIONS" and the pseudo mark "LAUNCH PADPRODUCTIONS" to another registrant in Class 35. The PTO also permitted the registration of "LAUNCH PAD" to a different registrant in International Class 35. Seven registrations of or including "LAUNCHPAD" or "LAUNCH PAD" exist in International Class 9 and two in International Class 28.
Fourthly, Respondent denies that its products and services overlap those of Complainant. Whereas Complainant is in the business of "providing advertising, marketing and other consulting services to assist ... companies and individuals in improving their sales and marketing activities", the services offered by Respondent from the domain name in dispute are principally Internet-based computer applications for businesses and individuals. The fact that Internet users may have found Respondent's domain when looking for complainant's services does not establish any proof in that regard. It is a fact that thousands of Internet users daily find the wrong domain when they guess at the "obvious" name. Customers of all of the other businesses world-wide which use the term "launchpad" - including those who have trademark registrations on that name - may have had the same experience. If Respondent is deprived of the use of "launchpad.com", those looking for Respondent's site will be similarly mis-directed. This is, Respondent claims, no different from any other resource for locating businesses and people.
Respondent also claims that it had no knowledge of complainant's existence when registering the domain name in dispute. Respondent denies any intent or desire to confuse or take complainant's customers and has brought into question whether any serious confusion exists at all, or has existed. Complainant has produced no evidence that respondent has used its domain name in bad faith, and Respondent denies having such intent. Complainant did not attempt to create "an Internet presence" until November, 1997. At that time, Respondent had already been using the domain name "launchpad.com" and the business name "LaunchPad" for more than two and a half years.
5. Discussion and Findings
The parties to this case have not brought into question the power of this Panel to decide the case according to the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (Oct. 24, 1999) ("ICANN Rules"),
Under para 4 (a) of the ICANN Rules, mandatory administrative proceedings like the present are required if a third party (complainant) asserts that the domain name at issue is identical or confusingly similar to the complainant's trademark (i.); that the respondent has no rights or legitimate interests in the domain name (ii.); and that the domain name has been registered and is being used in bad faith (iii.). If the complainant successfully proves all three elements, then this Panel has the authority to require the cancellation of the respondent's domain name registration, or to order that it be transferred to the complainant, cf. para 4(i). It is therefore these three issues which are in question in this case.
(i.) Identity or Confusing Similarity
As to the first question of similarity, it is clear to this Panel that the marks "Launch Pad" and "LaunchPad" are similar. The Panel agrees with Complainant (and this point does not seem to have been questioned by the Respondent) that the lack of a blank space between the two words Launch and Pad does not alter the substance of these two words.
(ii.) Rights or legitimate interests
Paragraph 4(a)(ii) of the ICANN Policy also provides that the respondent has no rights or legitimate interests in respect of the domain name. As examples of circumstances that can demonstrate the existence of such rights or legitimate interests, paragraph 4(c) makes note of (i) the use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
Under the ICANN Rules, the Panel shall make its decision on the basis of the information given in the Complaint and the Response. Since the Rules do not give Complainant the chance to comment on points made or information given in the Response which were not dealt with in the Complaint, the Panel's decision on such points and information has to be based on the Response, unless the Panel finds them to be unlikely or unsubstantiated. Such a practice can only be justified given the possibility to overturn the decision subsequently in legal proceedings between the parties, cf. para. 4 (k.) of the ICANN Rules.
In its response, Respondent has stated that it has used the name «Launchpad» as its business name for a long time, and obviously also in March 1995 when the registration in dispute was made. In lack of further information on that point, the Panel takes it for granted that Respondent did not register that name as its trademark in the United States Patent and Trademark Office or in other federal or state registers. However, it is a well-established principle in trademark law - also in U.S. state laws and under federal law - that trademark rights can be protected, and even enforced, in the absence of such registration. Clearly, one of the shortcomings of having an unregistered common law trademark is its more limited geographical scope. But in relation to the use of trademarks on the Internet in general, and in this matter in particular, it is the opinion of the Panel that this limitation should not be given weight: The domain name in question is registered under a generic toplevel domain (i.e. the .com-domain) which by its nature is global, and both companies are obviously conducting their business on a scale which can not be regarded as local. Therefore, when considering the right of a party to obtain domain name registration for a business name or unregistered trademark, the fact that the said party has actually used that mark for its products or services gives that party a legitimate interest in using a similar Internet domain name. This principle also corresponds with the generally agreed «first filed, first served»-rule of domain name registration.
Based on the information in the case provided by the Respondent, the Panel finds it plausible that Respondent by its very use of the «Launchpad»-name has acquired a common law trademark right to use the name «Launchpad» for products and services, and that this right also gives Respondent a legitimate interest in the continued use of the launcpad.com domain name for its business as Respondent has registered as its domain name long before Complainant made attemts to register her registered trademark as a domain name.
(iii.) Bad Faith Registration and Use
Given the conclusion in relation to paragraph 4(a)(ii) of the ICANN Policy, it is not necessary for the Panel to deal with the issue of bad registration as set forth in paragraph 4(a)(iii) of the ICANN Policy. However, since this question is dealt with by both parties to the case, the Panel shall make a few comments to this issue also.
Paragraph 4(b) of the policy sets forth four examples of circumstances under which the registration and use of a domain name may be found to be in bad faith: (1) the respondent has registered or acquired the domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant at a profit; (2) the respondent registered the domain name to prevent the complainant from reflecting its trademark in a corresponding domain name and has engaged in a pattern of similar conduct; (3) the respondent registered the domain name primarily to disrupt a competitor's business; and (4) the respondent's use of the domain name intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's trademark.
As this provision reads, the requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. Given what is said above on the legitimate use of the «Launchpad»-name for the products and services offered by Respondent, this Panel finds no ground for applying this provision in the present case. From the information that can be read in the documents of this case, the Panel finds no basis for stating that Respondent has made any attempts to divert costumers from Complainant to his site. For the same reason, the Panel finds no basis for applying 15 U.S.C. § 1125(d) (the Anti CyberSquatting Consumer Protection Act of 1999).
As stated above, based on the evidence of the parties, the ICANN Regulations and guidance provided by the laws of the United States, the Panel concludes that (a) the Domain Name registered by Cooper Consulting, Inc. and at issue herein is identical to the registered trademark of Shelley Harrisson, (b) that Cooper Consulting, Inc., had a legitimate interest in respect of using the domain name for its business, and that (c) the domain name at issue was not registered and is not being used in bad faith by Cooper Consulting.
Accordingly, since Shelley Harrisson has only proved one of the three elements set forth in paragraph 4(a) of the ICANN Policy, the Panel rejects the complaint made by Shelley Harrisson.
Copenhagen, 4 April 2000
(s) Mads Bryde Andersen, Professor, dr.jur.
Single Member Panel