1. Parties and Contested Domain Name
The Complainant is Softcom Technology Consulting Inc. of Ontario, Canada represented by Shelley Samel and Gowling Lafleur Henderson LLP. Respondent is Mail2net Internet Limited, represented by Simon Fogarty of A.J.Park, both of Wellington, New Zealand. The contested domain names are " mail2net.com " and " mail2net.org. "
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on September13. The hardcopy of the Complaint Form and annexes were received on September13. Payment was received on September 14.
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 Tucows, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on September13. The requested information was received September20.
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 under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on September 20. This date is the official commencement date of the administrative proceeding.
Only the e-mails to the email@example.com and firstname.lastname@example.org were returned 'undeliverable'. All the faxes were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
On October 04 the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on October 09, 2001.
On October 09, 2001, the Clerk's Office contacted Mrs Diane Cabell, and requested that she acts as panelist in this case.
On October 10 2001, Diane Cabell, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 10, 2001, the Clerk's Office forwarded a user name and a password to Diane Cabell, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 10, 2001, the parties were notified that Diane Cabell had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 24, 2001.
3. Factual Background
Complainant is a Canadian company that uses the phrase "mail2web" in conjunction with a logo consisting of a stylized happy-face surrounded by a ring of small colored circles. In the samples of advertisements supplied to the panel, a "TM" symbol is attached also. Complainant provides an Internet based e-mail application, which allows visitors to view their e-mail (as sent to their current e-mail account, such as a work account, an at home account, etc.) from POP3 e-mail servers. Complainant registered the domain name "mail2web.com" on 22 August 1997.
The Complainant registered the domain names " mail2wap.com " and " mail2pda.com " on September 30 and October 28, 1999 respectively. The Complainant uses " mail2wap " in association with a service which allows visitors to access its mail2web service via a WAP-browser-equipped mobile phone. Similarly, the Complainant uses " mail2pda " in association with a service which allows visitors to access its mail2web service via their Personal Digitial Assistant.
Respondent is a New Zealand enterprise offering net-based mail and website hosting services as well as e-mail addresses in the domain "mail2net.com." The contested domain name, " mail2net.com " was registered on 16 June 2000.
4. Parties' Contentions
Complainant asserts that it has common law mark rights in "mail2web," "mail2wap" and "mail2pda" in Canada and in a multitude of jurisdictions around the world by virtue of use and advertisements dating from 1999 both online and in a number of domestic and foreign print publications. Complainant supplied copies of sample ads (the only date appearing in any of the samples is a 2000 copyright notice) and listed (without supporting documentation) its expenses for advertising in specific publications.
Complainant argues that Respondent has no right or legitimate interest in the contested domain name, "mail2net.com," because Respondent has engaged in an unfair trade practice by adopting a confusingly similar name in order to confuse and divert consumers from the Complainant's MAIL2WEB services to the Respondent's identical MAIL2NET services. Complainant asserts that because this practice is unfair and infringing, it cannot be legitimate. The same conduct is also alleged to constitute bad faith under Section 4(b)(iv). As evidence of confusion, copies of e-mails from two consumers are supplied that were intended for Respondent, but addressed to Complainant.
Respondent asserts that Complainant has no mark rights in any of these terms because they are generic for types of e-mail services. It suggests that Complainant cannot supply any trademark registrations as evidence of a mark claim precisely because such an application would be rejected. Respondent supplies copious lists of third-party "mail2" domain registrations (i.e., mail2palm, mail2fax, mail2order) to support the contention that the term is so widely used online that Complainant's use of it cannot possibly be distinctive and that the term is commonly used to refer to e-mail services of various kinds. No examples of actual services using the term are supplied, however.
Respondent also denies prior knowledge of Complainant's use of the "mail2web." Respondent began operations in the spring of 2000 and supplies both (1) a printout from the New Zealand Companies Office database attesting to Respondent's incorporation as " Mail2net Internet Limited " on 12 March 2001 and (2) a copy of an encryption certificate issued by Thawte Consulting (attesting to the security of Respondent's server for financial transactions) dated 13 March 2001.
5. Discussion and Findings
Complainant has not satisfied the panel that it has acquired trademark rights in the terms "mail2" or "mail2web. If not generic, they are certainly descriptive words for Net-based e-mail services and thus (under most common law regimes) must be shown to have acquired secondary meaning before rights can be asserted against junior users. Complainant has not provided sufficient evidence of distinction in either Canada or New Zealand. A list of advertising expenses and samples of ads that feature an image logo do not establish secondary meaning in a word mark.
In addition, Respondent has supplied evidence of rights and legitimate interest under Section 4(c)(i) by preparations to engage in a bona fide offering of goods and services prior to notice of the complaint and under Section 4(c)(ii) in that it is commonly known as a corporation by the disputed domain name.
Complainant's request to transfer the domain is denied.
(s) Diane Cabell
Cambridge, MA, US
October 20, 2001