ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: MTR SOFTWARE
Respondent: ESTHER CAO
Case Number: AF-0415
Contested Domain Name: fitall.com
Panel Member: Gabriel F. Leonardos
 

 

1. Parties and Contested Domain Name

Complainant, MTR Software, is a company established in Toronto, Canada.

Respondent, Esther Cao, is a natural person residing in Mt. View, CA, U.S.A.

The contested domain name, "fitall.com", has been registered by Respondent with Network Solutions, Inc..

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on September 8, 2000. The hardcopy of the Complaint Form and annexes were received on September 12, 2000. Payment was received on September 11, 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 essential contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, inc, the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on September 12, 2000. The requested information was received September 13, 2000.

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's Office fulfilled all its responsibilities in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on September 13, 2000. This date is the official commencement date of the administrative proceeding.

All emails and faxes to the Respondent were successful.

The complaint, official notification and all the annexes were sent to the Respondent via registered mail with proof of service. According to the Canada Post tracking system, all were delivered.

On October 1, 2000, the Respondent submitted her response via eResolution's Internet site.

The signed version of the response was received on October 10, 2000.

On October 12, 2000, the Clerk's Office contacted Mr. Gabriel Francisco Leonardos, and requested that he act as panelist in this case.

On October 13, 2000, Mr. Gabriel Francisco Leonardos accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On October 13, 2000, the Clerk's Office forwarded a user name and a password to Mr. Gabriel Francisco Leonardos, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On October 13, 2000, the parties were notified that Mr. Gabriel Francisco Leonardos had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 26, 2000.

3. Factual Background

Complainant has produced convincing evidence that "FitAll" has been used by Complainant as a trademark distinguishing certain software since 1984. The " FitAll " software has been sold by Complainant in many countries all over the world, in statement not contested by Respondent.

Respondent argues that she registered the domain "fitall.com" to be used in a future legitimate retail web site, which shall be in a "completely unrelated business sector" than that of Complainant. Respondent did not inform the date in which the domain name was registered.

Prior to initiating this dispute resolution, Complainant directly contacted Respondent seeking the voluntary assignment of the domain name, and willing to reimburse her of her out-of-pocket expenses. Respondent did not agree with Complainant's request.

4. Parties' Contentions

Complainant contends that Respondent's use of "fitall.com" will cause confusion because the spelling is identical to its trademark "FitAll" and because the standard for domain names uses all lower case letters. Complainant argues that Respondent failed to exercise due diligence, because, if she had, she would have easily discovered Complainant's trademark.

Respondent contends that "fitall.com" is properly registered and being "developed" as part of an upcoming business venture. Respondent did not give any details about such venture, nor gave any information as to what kind of development is intended for "fitall.com".

5. Discussion and Findings

It is clear from the evidence produced, and not contested by Respondent, that Complainant has trademark rights over "FitAll". There is no means to know, at this point, which kind of use could be made in the future, by Respondent, of the domain "fitall.com".

The problem here lies in identifying whether all three conditions established by ICANN's Policy are met: copy or similarity, illegitimacy, and bad faith. As to the first condition, it is clear that the disputed domain is identical to Complainant's trademark "FitAll". As to the second condition, this Panelist also agrees that Respondent has "no rights or legitimate interests in respect of the domain name", as Respondent never used the domain in question.

The third condition, bad faith, is also met in this Panelist's opinion, and this will be further explained. ICANN's policy gives examples of acts in bad faith, but the Policy makes clear that other circumstances might also lead to the conclusion that the registration was made in bad faith. In the Panelist's opinion, the number of domain names might be very large, but is finite. Unless a registrant has a clear business purpose, it is not reasonable to lock several domain names only for "future development", when such registrations signify a serious obstacle to the development of an actual, already existing business, for which the ownership of such domain name is important. Complainant is an element of circulation of wealth in the places where it operates. There is no indication that Respondent has any ongoing business, as she did not mention it; she simply registered a fancy name claiming she would use in the future for a "retail web site", but did not inform which kind of goods would be sold in such web site, and certainly the sale of software of any kind would signify a direct infringement of Complainat's trademark rights. She may register domains for future development, but only if third party's rights are not harmed by her activities. Registering domain names is an activity for the accredited registrars; people who wish to reserve domains for future use are not doing an illegitimate business, but are operating a very risky one, as they might be infringing other people's rights, even without knowing it. Therefore, those who register domain names for future use, as the Respondent, must exercise due diligence and search for third parties' trademarks, or bear the burden of loosing the registration, as in this case. Otherwise the transaction costs for companies which have already developed a goodwill upon a certain trademark (as the Complainant did) would sky-rocket, and this would be an extremely inefficient system for the economy as a whole. In other words, those who act as the Respondent simply have a higher likelihood of loosing their domain to complainants, which have acquired trademark rights, rather than companies, which register the domains for actual and present use in the Internet. It is true that "FitAll" has a generic meaning, but reality has shown that it is not essential to the successful operation of an e-commerce site to use a generic domain name. "Amazon.com" uses a domain name with no relation to the goods it sells, but is successful anyway. Therefore, the fact that "FitAll" might also have a generic meaning, apart from its trademark (secondary) meaning, does not exempt Respondent from the risk of infringement of a third party's trademark rights. For all the above reasons, this Panelist finds that the reckless registration of a domain name, with the clear risk of infringing third party's trademark rights, as done by the Respondent, is also an act of bad faith which falls in ICANN's Policy criteria and authorizes the transfer of the domain name registration in favor of the Complainant.

6. Conclusions

The domain name "fitall.com" is to be transferred to Complainant.

7. Signature

Rio de Janeiro, Brazil, October 26, 2000

(s) Gabriel F. Leonardos

Presiding Panelist