ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Foresight Corporation, 4950 Blazer Parkway, Dublin, Ohio, USA. Complainant is a Delaware corporation qualified to do business in Ohio under the assumed name TradeSite Corporation.
Complainant owns a US trademark registration for TradeSite in Int. Cl. 9, for "computer software, namely, software for the creation of electronic forms and guidelines therefor, and for the conversion of electronic forms to EDI (electronic data interchange) data and EDI data to electronic forms, such forms established in accordance with standards and guidelines set by national and international standards organizations for electronic business transactions, the computer transfer of such forms and data taking place through the use of web browsers and web servers." The mark was first used on November 14, 1997, used in commerce on November 14, 1997, and registered on June 13, 2000.
The Respondent is Michael Servos, 1020 Spruce Drive, Belleair Beach, Florida, USA. Respondent registered the domain name tradesite.com with Network Solutions, Inc. on June 7, 1996, and began carrying live traffic on the site on September 8, 1997. The site originally hosted online auctions for the public to post products for sale without fee or commission. Respondent continued to operate the site in that mode until July 1999, when Respondent temporarily suspended operations to update, modify, and enhance the site so it could be developed into a commercial auction site. The site is active, but carries no auctions and has not been updated in over a year. Developmental work continues with assistance from a third party, and Respondent states that the site will be reactivated in the next few months. Respondent filed an application for a US service mark in Int. Cl. 35 for business-to-business auction services, which is pending.
2. Procedural History
The complaint was filed electronically on September 29, 2000; the hardcopy and payment were received on October 5, 2000. EResolution Clerk's Office sent an email to the Registrar, Network Solutions, Inc., on September 29, 2000 to confirm the billing contact and obtain a copy of the registration agreement. The requested information was received on October 2, 2000. The Clerk's Office fulfilled all of its responsibilities under Paragraph 2(a) and forwarded a copy of the complaint to the Respondent on October 10, 2000. That date is the commencement date of the administrative proceeding.
On October 29, Respondent submitted his Response electronically. A signed version was received on November 2, 2000.
On November 6, 2000, the Clerk's Office informed the Parties of the selection of the two co-panelists, Michelle Brownlee and Sarah Cole, and contacted them to request they act as co-panelists. Both accepted. However, Ms. Brownlee notified the Clerk's Office of her professional links with the Registrar. The parties were informed and given an opportunity to request recusal; no one requested recusal within the deadline.
On November 13, 2000, the Clerk's Office contacted Sandra Sellers to act as President of the Panel; she accepted.
On November 20, 2000, passwords were issued to the Panel, and the Clerk's Office notified the parties, the Registrar and ICANN that the panel had been appointed. The decision was to be due on December 4, 2000.
On December 4, 2000, the President of the Panel informed the Clerk's Office that the decision would be handed down by December 12, 2000, the extra time being necessary due to the Thanksgiving holiday and the panelists' travel schedules.
On December 11, 2000, the Panel requested the Complainant to answer several questions, and required that the responses be submitted by noon, Wednesday, December 13, 2000. The Panel indicated that its decision now would be due on Friday, December 15, 2000.
3. Factual Background
The following chronology of facts is deemed relevant.
June 7, 1996: Respondent registered the domain name tradesite.com with Network Solutions, Inc.
August 6, 1997: Complainant registered the domain name tradesite-edi.com with Network Solutions, Inc.
Sept. 8, 1997: Respondent's tradesite.com web site went live for free auction services.
Nov. 14, 1997: Complainant began use of its trademark TradeSite.
Dec. 12, 1997: Complainant filed an application in the US Patent and Trademark Office to register the trademark TradeSite.
December 1997: Complainant attempted to register the domain name tradesite.com, but found that it was unavailable. Complainant did a search to determine who owned the domain name tradesite.com, and attempted to access the tradesite.com website. The person who initiated this search is no longer with Complainant, and Complainant does not have a record of the results.
?? 1999: Respondent transferred hosting of its website to Genesis II Networks, at a time when, according to Genesis II Networks, the website was fully active and had considerable traffic.
June/July 1999: Respondent temporarily suspended activity on the website to upgrade and convert to a paid business model.
March 24, 2000: Foresight Corporation, an Ohio corporation, is merged into Foresight Corporation, a Delaware corporation ("Foresight Delaware").
June 13, 2000: US Patent and Trademark Office issued a registration to the Complainant for the TradeSite trademark.
July 12, 2000: Complainant sent a letter to Respondent offering to buy the contested domain name for US$5,000.00.
July 13, 2000: Respondent called Complainant in response to Complainant's July 12th letter. Robert Fisher, President and CEO of Foresight Corporation, stated in an affidavit that Respondent said he would accept US$1,000,000.00. Respondent stated in an affidavit that he did not make an offer to sell the domain name, but did advise the Foresight representative that the name might be for sale with other assets of Respondent's company.
July ?, 2000: Respondent filed an application with the US Patent and Trademark Office to register TRADESITE.COM as a US service mark. The application is pending.
Aug. 11, 2000: Foresight Delaware is registered as a foreign corporation in Ohio under the assumed name "TradeSite Corporation."
Sept. 29, 2000: Complainant filed the complaint in this proceeding.
4. Parties' Contentions
Complainant contends that Respondent's domain name, tradesite.com, which is used for business-to-business Internet auctions, is identical or confusingly similar to Complainant's registered trademark, TradeSite, which is used for computer software used by businesses for business-to-business transactions via the Internet. Complainant further contends that Respondent has no legitimate interest or rights in the domain name because Respondent is not exercising active use of the domain name, and has abandoned any possible previous rights in the domain name. Finally, Complainant contends that Respondent registered and is using the domain name in bad faith because Respondent is maintaining a nonfunctional site, and allegedly offered to sell the domain name for US$1,000,000.00. Complainant requests that the domain name be transferred to Complainant.
Respondent contends that he was the first user of the mark tradesite, so his rights pre-date Complainant's rights, and he could not have registered the domain name in bad faith. Respondent contends that he has suspended active use of the domain name only temporarily, while upgrading the site and changing from a free to a paid business model. Further, Respondent contends that there is no confusion between Complainant and Respondent's marks. Finally, Respondent contends that Complainant has engaged in Reverse Domain Name Hijacking and has abused the ICANN Uniform Domain Name Dispute Resolution Policy ("UDRP") by filing this complaint.
5. Discussion and Findings
Under Paragraph 4(a) of the UDRP, the Complainant has the burden of proving each of the following: (1) that the domain name is identical or confusingly similar to the complainant's mark; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent registered and is using the domain name in bad faith. The Panel finds that Complainant has not carried its burden with respect to the second and third elements.
The Complainant Has Not Shown that Respondent Has No Rights or Legitimate Interests in the Domain Name
As set forth in the above chronology, Respondent registered the domain name tradesite.com in June 1996 and began to use it in commerce in September 1997, well before Complainant began to use the mark TradeSite in November 1997. The tradesite.com site appears to have been actively used from November 1997 through June or July 1999; according to the site's current hosting company, Genesis II Networks, it was fully active with considerable traffic. This Panel finds that Respondent established rights and legitimate interests in the domain name.
However, since mid-1999, the domain name resolves to an active site, but which has not been updated. Complainant contends that the Panel should infer that Respondent has no intent to use the site again based on Respondent's failure to update the site or carry active auctions since mid-1999, and in effect, that Respondent has abandoned its rights and legitimate interests in the domain name.
This Panel finds that Respondent has not abandoned its rights or legitimate interests in the domain name. First, Respondent states that he is in the process of upgrading the site and its auction services, and changing from a free service to a paid service model, but that he definitely intends to continue to use the tradesite.com domain name. A letter from Genesis II Networks, a third party web hosting company, supports these statements. Second, even without such evidence of intent to continue use of the domain name, this Panel finds that not enough time has passed to infer non-use.
The Complainant Has Not Shown That Respondent Registered and Used the Domain Name In Bad Faith
Again, as set forth in the above chronology, Respondent registered the domain name tradesite.com in June 1996 and began to use it in commerce in September 1997, well before Complainant began to use the mark TradeSite in November 1997. Since Respondent registered the domain name more than a year prior to Complainant's use of the mark, this Panel finds that Respondent did not register the domain name in bad faith.
Complainant contends that Respondent is using the domain name in bad faith by maintaining an inactive site, and by allegedly offering to sell the domain name to Complainant. This Panel is not persuaded by Complainant's allegations. First, Respondent has submitted a justifiable explanation as to why the site is not fully active, and demonstrated an intention to reactivate the site under a different model in the near future. Second, Complainant initiated the discussion with Respondent about whether the domain name was for sale. There is no evidence that Respondent generally advertised the domain name for sale, or that Respondent has engaged in a pattern of registering and selling domain names. This Panel therefore finds that Respondent has not used the domain name in bad faith.
The Complainant has failed to prove two of the three elements of Paragraph 4(a). The Panel therefore deems it unnecessary to address whether the domain name is identical or confusingly similar to Complainant's trademark.
Complainant Has Engaged In Reverse Domain Name Hijacking
Paragraph 15(e) of the ICANN's UDRP Rules provides, in relevant part that "[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." Respondent has asked the Panel to make a finding that the complaint was brought in bad faith in this case.
There is evidence in this case that Complainant did not act in good faith in filing its complaint. In particular, the Panel relies on the following facts:
- Respondent registered its domain name on June 7, 1996, more than a year before Complainant began use of or attempted to register the TradeSite mark.
- In December 1997, Complainant attempted to register the domain name tradesite.com, but found it was unavailable. Complainant then initiated a search into the ownership of the tradesite.com domain name and accessed Respondent's web site.
- Respondent's web site has been active since September of 1997, and Complainant does not allege any instances of actual confusion during this period arising from Respondent's operation of its web site.
- Complainant took no action to try to prevent Respondent from using the tradesite.com domain name for nearly three years after it began use of its TradeSite mark.
- Complainant's trademark registration issued on June 13, 2000, and was presumably received by Complainant a short time thereafter.
- On July 12, 2000, Complainant's CEO sent Respondent a letter that discussed "buying the rights to the tradesite.com URL[sic]" and offered $5,000 for the transfer of the domain name. The letter stated that Complainant owned a registration for TradeSite, but that the name was "not . . . our company name." However, on this date, Complainant's CEO, Mr. Fisher, understood that Foresight Delaware used the name Tradesite Corporation as an assumed name in Ohio.
- On August 11, 2000, Foresight Delaware registered the name Tradesite Corporation as an assumed business name in Ohio.
The most likely explanation of the events described above is: (1) Complainant was aware of Respondent's earlier registration of the domain name; (2) Complainant waited until it received its trademark registration to take any action, probably hoping the US registration would strengthen its claim against Respondent; (3) Complainant made an offer to buy the domain name, giving Respondent misleading information about Complainant's use of the TradeSite Corporation name, most likely in order to secure a lower price for the name; (4) when Respondent rejected its offer, Complainant filed this action, probably hoping to bully Respondent into backing away from the name.
In the qtrade.com case (eResolution case no. AF-0169), the Panel, quoting the decision in the thyme.com case (eResolution case no. AF-0104), stated that "bad faith should be found if the complainant has an obvious interest in obtaining the respondent's domain name for its own use, yet lacks even a plausible argument on each of the elements set forth in paragraph 4(a) of the ICANN Policy." In the smartdesign.com case (WIPO case no. D2000-093)1, the Panel stated that bad faith could be found where a complainant pursued a complaint that it knew to be unsupportable, or filed a complaint with reckless disregard as to whether its allegations are supportable.
The facts discussed above demonstrate a high likelihood that Complainant either knew that the allegations of bad faith it was asserting against Respondent were unsupportable or filed its Complaint with reckless disregard as to whether its allegations were supportable. Complainant knew or should have known that Respondent registered its domain name earlier than Complainant began use or attempted registration of its TradeSite mark, alleges no instances of confusion, and took no action with respect to Respondent's use of the domain name for nearly 3 years after discovering it. It is difficult to conceive how Complainant could have believed in good faith that it had a supportable claim of bad faith against the Respondent. The Panel's words in the smartdesign.com case aptly describe the situation here: "The Panel is unable to assess the Complainant's state of mind when the complaint was launched, but in the view of the Panel, the complaint never should have been launched. Had the Complainant sat back and reflected upon what it was proposing to argue, it would have seen that its claims could not conceivably succeed…." Complainant's lack of candor in its negotiations with Respondent lends further support to a finding of bad faith.
Accordingly, for the reasons discussed above, the Panel finds that the Complaint was brought in bad faith, either in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain-name holder, and constitutes an abuse of the administrative proceeding.
This Panel unanimously concludes that Complainant has not proven all of the elements of Paragraph 4(a), and that the domain name tradesite.com shall not be transferred. The Panel further finds that Complainant has engaged in Reverse Domain Name Hijacking and abused the UDRP process.
(s) Sandra A. Sellers, President
(s) Michelle Brownlee, Co-Panelist
(s) Sarah Cole, Co-Panelist
1. The qtrade.com and smartdesign.com Panels found bad faith on the part of the Complainant under circumstances similar to the ones here. In both cases, complaints were filed only after efforts to convince the respondents to sell the domain names failed.