ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
Complainant is Jasc Software, Inc. According to its complaint, it is a corporation with principal place of business in Eden Prairie, Minnesota, U.S.A. Complainant represents itself in this proceeding by and through Lisa Piper, an employee of Complainant.
Respondent is not identified by name, only as a person or entity located in Yerevan, Armenia. Respondent has not filed a Response to the Complaint.
The domain name at issue in this case is: <pspusersgroup.com> (hereafter, "the domain name").
The registrar for this domain name is bulkregistrar.com (hereafter "the registrar").
2. Procedural History
The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy", or "UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of eResolution (hereafter "The Supplemental Rules").
The current dispute lies within the scope of the Policy, so that this Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between the Registrar and the Respondents clearly incorporate the Policy, so that Respondents were notified of the existence of the Policy' s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondent' s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent' s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to successfully make its case, the Complainant must prove each of these three elements.
An electronic version of the Complaint form was filed on-line through eResolution's Website on September 26, 2001. The hardcopy of the Complaint Form and annexes were received on October 11, 2001. Payment was received on October 12, 2001.
Upon receiving all the required information, eResolution's clerk proceeded to:
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Bulkregister.com, 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 28, 2001. The requested information was received October 2, 2001.
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 October 15, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the postmaster@ pspusersgroup.com were returned 'undeliverable'. All the faxes were successful.
The Respondent did not submit a Response either via eResolution's website or a signed version.
On November 6, 2001, the Clerk's Office contacted Paul E. Mason, and requested that he act as panelist in this case.
On November 7, 2001, Paul E. Mason accepted eResolution's invitation to serve as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On November 7, 2001, the Clerk's Office forwarded a user name and a password to Paul E. Mason, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On November 7, 2001, the parties were notified that Paul E. Mason had been appointed and that a decision was to be, save exceptional circumstances, handed down by November 21, 2001.
After reviewing the case file, on November 13, 2001 the Panel asked the Clerk's Office to invite the Complainant to submit, within one week of this date, evidence to support its allegations in the complaint. The Clerk' s Office indicated on November 14, 2001 that it would immediately transmit this request to Complainant. Complainant requested an extension until November 26, 2001 to submit supplementary information, which was granted by the Panel. On November 26, 2001 Complainant submitted via email attachments supplementary information to the Panel.
3. Factual Background
The complaint alleges in Paragraph 4(b), that Paint Shop Pro is a registered trademark of complainant. In an independent visit to Complainant's home page www.jasp.com on November 19, 2001, the Panel learned that "Paint Shop Pro" refers to a photo editing software program or programs.
In support of its claim to intellectual property rights in the "Paint Shop Pro" trademark, Complainant submitted, as part of its supplementary report to the Panel on November 26, 2001, an electronic copy of its registration for this mark with the U.S. Patent and Trademark Office, registration number 2491733, registered on September 25, 2001, after having been initially filed for registration on February 3, 1999. Complainant also submitted as part of this supplementary report evidence of usage in commerce of this trademark, in the form of a company brochure describing the product by this name.
The Complaint further avers that the term "PSP", an abbreviation of Paint Shop Pro, " is a very common and well-known reference to our trademarked product as is the term 'users group' with various software programs." See Complaint, paragraph 4(c). Complainant has submitted some evidence of its usage in commerce of the term "PSP" by sending the Panel, as part of its supplementary report of November 26, 2001, the first page of Chapter 5 of its browser instruction booklet entitled "Using PSP Browser".
4. Parties' Contentions
Since Respondent has not answered the complaint, the contentions here are those of Complainant only.
Complainant contends that:
(i) Respondent's domain name is identical or confusingly similar to Complainant's registered "Paint Shop Pro" trademark and its abbreviation "PSP "; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) Respondent' s domain name has been registered and is being used in bad faith, in this case by -
a) launching a website with pornographic and adult entertainment content; and
Further, in response to the question set forth in Paragraph 4(b) of eResolution' s Complaint template regarding the intentions of Complainant to use the domain name in the future, Complainant responds that the domain name "will go back to being a site where users of our software can go for tutorials, community, and information on our product. "
In its prayer for relief, Complainant asks for a transfer of the domain name.
5. Discussion and Findings
On Complainant' s first contention in Section 4(i) above the Panel finds that
- Complainant has provided satisfactory evidence in its supplementary report to the Panel that it has intellectual property rights in the trademark "Paint Shop Pro", by registration and by common law usage in commerce.
- On the more focused and relevant question of Complainant's intellectual property rights in the term "PSP" , Complainant has submitted some evidence of its usage in commerce with the brochure, see Section 4 above. Unrebutted by Respondent, the Panel finds that Complainant has just barely met its burden of proof on this element of its case.
- On the question of rights to the name "usersgroup", the Panel does not find it necessary to make a specific finding, since many UDRP cases have held that a compound domain name which "wraps around" a complainant's trademark will still cause confusion with that mark. The use of "usersgroup" as a suffix would fulfill that requirement in the present case.
On Complainant's second contention in Section 4(ii) above, the Panel finds that Respondent has shown no intellectual property rights or legitimate interest in the domain name.
On Complainant's third contention in Section 4(iii) above, the Panel made an independent visit to the website www.pspusersgroup.com on November 17, 2001, and found that Respondent is using the domain name in bad faith by having it resolve to an adult entertainment/pornographic website which also contained an open offer to sell the domain name. Again, this has been the conclusion of many UDRP cases. And while this Panel cannot read the minds of Respondents who do not reply, it may infer from Respondent's lack of response the likelihood that it had registered the domain name for this very purpose, an act of bad faith registration.
For the reasons stated in Section 5 of this decision above, the Panel hereby issues its order for the Registrar to transfer the domain name to Complainant.