WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Competitive Advantage, Inc .v. MailM
Case No. D2000-0288
1. The Parties
The Complainant is Competitive Advantage, Inc of 1510 Chester Pike, Baldwin Tower, Suite 110, Eddystone, Pennsylvania 19022 United States of America.
The Respondent is MailM of 77 Mowat Avenue, Suite 508, Toronto, Ontario M6K 3E3, Canada
2. The domain name and Registrar
The domain name at issue is:
MailM
and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on April 12, 2000 [electronic version] and April 14, 2000 [hard copy]. The Centre verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of commencement of this administrative proceeding is April 21, 2000.
On April 19, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on April 20, 2000, Network Solutions Inc transmitted by email to the Center Network Solutions Inc�s verification response confirming that the registrant is MailM and that the contact for both administrative and billing purposes is Mr. Ray King of Wired Solutions Inc.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on April 21, 2000, to:
postmaster@mailm;
ray@; and
dusadmin@
the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by May 10, 2000. On the same day the Center transmitted by fax and by mail copies of the forgoing documents to:
MailM
77 Mowat Avenue
Suite 508
Toronto
Ontario M6K 3E3
Canada
and to
Ray King
Wired Solutions Inc
77 Mowat Avenue
Suite 508
Toronto
Ontario M6K 3E3
Canada
The Response was received on May 1, 2000. The Respondent elected to have this Case adjudicated by a 3 member panel.
Having received Declarations of Impartiality and Independence and Statements of Acceptance from Mr. Jeffrey Samuels; Mr. G Gervaise Davis III; and Mr. David Perkins on May 22, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Messrs. Jeffrey Samuels, G Gervaise Davis III and David Perkins were formally appointed Panelists, with Mr. David Perkins as the Presiding Panelist. The Projected Decision Date was June 5, 2000. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
4.1 The Complainant
The Complainant, Competitive Advantage Inc operates a mail order service for children. The Complainant� s website [Exhibit A of the Response] states:
"The concept behind Mail Mania is simple. You buy a colourful, illustrated mail box from Dream Chaser Enterprises, via their toll-free line at 1-877-MAIL-4-KIDS. There are three different age-appropriate mail programs to chose from: Pet Shop Pen Pals (ages 4-8), Dream Riders (ages 8 and up), or Sneaker Seekers (ages 9 and up). Each mailbox contains a simple introductory kit to the program. All you and your child need to do is mark a choice of pen pal and/or subject matter on the enclosed reply card and send it in. Within a few weeks, your child will begin receiving personalised letters, one every two weeks. The initial $9.99 mailbox purchase includes six of these letters, providing three months of Mail Mania fun."
The Complaint states that the Complainant began using the trade mark "Mail Mania" on June 1, 1999. However, the Complainant�s website [Exhibit A to the Response] refers to a "... launch date of 9/9/99.".
4.2 The Respondent
The Respondent is Raymond Marc King operating under the name and style of MailM. Mr. King is an individual engaged in the development of Internet Software and Internet Websites. The Respondent states that he has developed several Internet Communication Programs and Exhibit D1 to the Response gives brief particulars of 4 such programs, namely QuickChat: ChatWorld: MailMania: MegaBoard: and DocuCom. The MailMania product is described as
"Essentially a �secured mail server�. Mail is both received and sent from a secure web page using either 40 or 128 bit Secure Socket Layers (SSL) encryption (depending on laws). MailMania is perfect for the Internet since it is fully Web-Based and can be accessed from anywhere in the world, all securely via SSL. The system is also instant. Because we deal with database technologies, we are able to ensure data is INSTANTLY available to the receiving party. Full auditing, tracking and reporting is also built-in and a pay-per-use scenario can easily be adopted."
The Response exhibits at D2 a copy of the homepage of the MailM website as operated in the Fall of 1998. The Response states that thereafter the software packages were sold to a third party and the domain name in issue has been temporarily licensed to a third party.
It is admitted in the Response that the URL currently leads to a web site called NakedNewsN, which is a referring source for Adult Internet Content. The Respondent states that to the best of his knowledge and belief and on assurance from the operators of that site, the content of the site is a legal and legitimate use of the Internet and complies with all laws of Canada and the United States. The Complaint refers to NakedNewsN as a pornographic website but does not make any allegation that it violates any applicable laws or regulations.
4.3 The Complainant�s Trade Mark
On December 14,1998, the Complainant applied to register the Mail Mania mark with the US Patent and Trade Mark Office for:
"Mail order children�s project club featuring puzzles, games, stickers, mobiles, stories, and a children�s letter periodically mailed that addresses one of several subject matters including games, puzzles and pets".
This US App. 75,604/706 was published as an INTENT to use a US trade mark on August 24, 1999. The actual TM has not yet issued but has been allowed as of May 5, 2000, according to US PTO records.
The Complaint states that the Complainant has used that Mark since June 1, 1999. However, as noted in para. 4.1 above, the Complainant�s website refers to launching its business on September 9, 1999. The difference in dates is not material for the purposes of this Decision. The Complainant�s website is [Exhibits A and B to the Response].
The application for [December 14, 1998] and issue of [August 24,1999] the Complainant�s US INTENT to use Mail Mania both post date registration on October 12, 1998, of the domain name in issue. Further, use of the Complainant�s Mail Mania mark, be it June 1 or September 9, 1999, post dates use by the Respondent of the domain name in issue in the Fall of 1998.
4.4 The Response
This contains, inter alia, the following submissions. When the Respondent registered the domain name in issue (October 1998) he conducted a Canadian and US trade mark search and found no registration for Mail Mania by the Complainant. This is not surprising, given that the Complainant did not apply for its US mark until December 1998. Had the Complainant checked for availability of domain names using the words Mail Mania at the time of commencing his business - be it June 1 or September 9, 1999 - the Respondent points to the fact that both MailM and MailM were available at that period. MailM was not registered as a domain name until January 10, 2000 [Exhibit C1] and MailM was not registered until March 22, 2000 [Exhibit C2]. Not only was the domain name in issue registered [October 12, 1998] before the Complainant applied for its US trade mark [December 14, 1998] but subsequent to the latter date other parties have acquired top level domain names for MailMania. The Response cites as an example Mail Mania of Solana Beach, California [Exhibit E to the Response]. The Respondent operated the domain name in issue as an active website in the Fall of 1998 and its current use as licensed to a third party is not, to the Respondent�s knowledge in violation of applicable laws or registrations [para. 4.2 above]. The Respondent contends that the words mail and mania are generic. Mail in the form of electronic mail is a key element and primary use of the Internet and the Respondent chose the domain name in issue because it intuitively communicated an aspect of the service for which the Respondent intended to use the name, namely the MailMania and ChatWorld communication software.
4.5 Disputed Facts
The Complaint states:
"A representative for Competitive Advantage contacted MailM during the Summer of 1999 to inform the Respondent of Competitive Advantage�s rights in the Mail Mania mark and to request that the MailM domain name registration be transferred to Competitive Advantage. MailM demanded that it be paid $92,000 for the domain name and has refused to transfer the domain name to Competitive Advantage without the payment of such monies."
In this respect the Response states in para. 14
"King has never contacted the Complainant to offer to sell it the domain name. If there was any contact as alleged by the Complainant, (which is not admitted but is specifically denied) then it was by the Complainant contacting King."
The Panel does not find it necessary to make a ruling in relation to this conflict because of the bases upon which its Decision is based (see below).
5. Parties� Contentions
A. The Complainant
The Complainant contends that the Respondent has registered as domain names a mark which is identical to or confusingly similar to the Complainant�s Mail Mania mark, that the Respondent has no rights or legitimate interests in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith.
B. The Respondent
The Respondent asserts that it has both rights and a legitimate interest in respect of the domain name in issue and that such domain name was registered and is being used in good faith. For those reasons, the Complaint should be rejected as not meeting the requirements of para. 4a of the Policy.
6. Discussion and Findings
6.1 The Policy para. 4a provides that the Complainant must prove each of the following:
- that the Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
The Complainant�s US trade mark Mail Mania and the Respondent�s domain name in issue MailM are, to all intents and purposes, identical. Thus, the Complaint satisfies the requirements of para. 4a(i).
6.3 Rights or Legitimate Interests
Para. 4c of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent�s rights or legitimate interest for the purpose of para. 4a(ii). Those circumstances are that:
(i) before any notice to the Respondent of the dispute, the Respondent�s use of, or demonstrable preparations to use the domain name or a domain name corresponding to the domain name, in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleading divert customers or to tarnish the trade mark or service mark at issue.
6.4 The Respondent has provided evidence that it was using the domain name in issue in connection with the bona fide offering of its Mail Mania secure mail server system in the Fall of 1998 before the Complainant began use of the Mail Mania trade mark in June (or September) 1999. Further, the domain name in issue continues to be used by the Respondent�s licensee. There is no evidence that use of the domain name has been or is being used in violation of any applicable laws or regulations.
6.5 The Respondent cites a decision of the National Arbitration Forum [FA #002000093547] in CRS Technology Corporation .v. Condenet Inc concerning the domain name . CRS were the proprietors of a Canadian trademark registration for CONCIERGE in respect of computer software application interfaces using intelligent technologies which provide access to travel services. The application for the mark was made in May 1995 and registered in April 1998. In July 1999 Condenet set up a home page announcing its service providing travel tips and advice, information on travel promotions, fare-finders, reviews of hotels, cruises and resorts, and other travel related topics. The Complaint was rejected and the Panel concluded [at para. 16 of the Decision]:
"Here, even though the trademark and name are all but identical, the Panel has determined that the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers."
6.6 Although that Decision is neither totally in point nor does it have any particular precedential value, it does in the above quoted reference express a view with which this Panel generally agrees. On a plain reading of the Policy, the Respondent has demonstrated both rights and legitimate interests in the domain name in issue. Further, the Complainant apparently trades using the domain name and has produced no evidence of confusion with the Respondent�s domain name in issue. The Complainant fails to meet the requirement of para. 4a(ii) of the Policy and as a consequence the Complaint fails in its entirety.
6.7 Bad Faith
It is, therefore, unnecessary to decide whether the domain name in issue was registered and is being used in bath faith [para. 4a(iii) of the Policy]. However, the Complaint totally fails to establish either. On the evidence before this Panel, the Complainant fails to satisfy any of the instances of registration and use in bad faith illustrated in para 4b of the Policy.
7. Decision
For all the forgoing reasons, the Panel decides that the Complainant has failed to prove two of the three elements of para. 4a of the Policy. Accordingly, the Panel denies the request that the registration of the domain name MailM be transferred to the Complainant.
David Perkins
Presiding Panelist
Jeffrey Samuels G Gervaise Davis III
Panelists
Dated: May 30, 2000
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