WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Omnipod, Inc v Ahmed Nassef
Case No D2002-0084
1. The Parties
The Complainant is Omnipod, Inc of 440 Ninth Avenue, 8th Floor, New York, NY10001, United States of America.
The Respondent is Ahmed Nassef of P O Box 830184, 11183 Amman, Jordan.
2. The Domain Name and Registrar
The domain name at issue is .
The Registrar is Internet Names Worldwide.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on January 26, 2002, [electronic version] and on February 5, 2002 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for 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 the commencement of this administrative proceeding is February 6, 2002.
On January 29, 2002, the Center transmitted via email to Internet Names Worldwide a request for registrar verification in connection with this case and on the same day Internet Names Worldwide transmitted by email to the Center Internet Names Worldwide's verification response confirming that the registrant is Ahmed Nassef who is also the contact for both administrative and technical purposes.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on February 6, 2002, by email this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by February 26, 2002. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to the Respondent.
The Notification of Complaint and Complaint addressed to the Respondent's address given in the Registrar Verification was returned to the Center on February 13, 2002.
No Response was received from the Respondent by the due date of February 26, 2002. On February 28, 2002, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.
On March 5, 2002, the Center received a Response from the Respondent and on March 6, 2002, Acknowledgement of Receipt of Respondent's Response was sent to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. By email dated March 5, 2002, the Respondent asked that the eight day delay in submitting a Response be waived on the basis that it was due to family medical reasons beyond his control. By email dated March 6, 2002, the Complainant requested the Response should be rejected since any request for additional time should have been made by the Respondent before the due date of February 26, 2002.
This is a matter for the discretion of the Panel. Here the Panel does not consider that the eight day delay has caused any delay in the timing of the Decision. Further, the Panel is concerned to ensure that the Parties are treated with equality and that each party is given a fair opportunity to present its case [Rules, paragraph 10(b)]. In the circumstances, the Panel is prepared to accept the Respondent's late Response. However, the Complainant will see from the Decision which follows that the Panel's reason for dismissing this Complaint is due to inadequacies in the substance of the Complaint rather than to the Respondent's case set out in the Response.
Having received on March 7, 2002, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
On March 28, 2002, the Center received an email with a supplemental filing from the Complainant. On April 1, 2002, the Respondent by email objected to the supplemental filing from the Complainant. The Policy and Rules does not foresee further submissions after the Complaint and Response, and neither has the Complainant given any justifiable reason to make an exemption from this. The Panel, therefore, rejects the said supplemental filing.
Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 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
The Complainant
4.1 The Complainant's Business and Products
The Complainant gives no information as to its business other than it has a software product called POD and that it is s Delaware Corporation licensed to do business in New York. Only by accessing the Complainant's website has the Panelist been able to glean the following further information about the Complainant and its business. The following brief particulars are given.
"Company Overview
Omnipod was founded in May 1999, with the goal of providing a powerful corporate solution for employees, partners and customers to view, share, communicate and store information in real-time. In September 2000, Omnipod launched the Professional Online DesktopÔ (PODÔ ) and has provided its solution to several Fortune 1000 companies, including Levi StrausÔ , M&M MarsÔ and McCann-EricksonÔ .
Traditional corporate Intranets and extranets require complex software, expensive server equipment and a dedicated internal support staff to maintain systems and train users. The POD is a unique, turnkey solution that is cost-effective, highly secure and centrally controlled through Omnipod's data center. With a flexible and easily customizable interface, the POD is built to incorporate legacy systems and reflect virtually any corporate identity."
4.2. The website also contains features entitled
- Professional Online Desktop (POD) Benefits:
- Product Features; and
- Architectural Overview
a four page document entitled
- The Premier Communication and Collaboration Solution
and another (three pages) document entitled
- The Limitations of Existing Instant Messaging and File Sharing Solutions
dated January 2002.
These documents variously feature the marks OMNIPOD, both with and without device; PROFESSIONAL ONLINE DESKTOP (POD), both bearing the symbol TM; and the POD.
The website also contains a September 19, 2001, Press Release offering to donate US$2 million worth of its products and services to those companies and organisations affected by the terrorist attacks of September 11, 2001. This Press Release contains the following statements relating to the Complainant's business and products.
"Through Omnipod's client/sever architecture, employees are able to download the POD (professional online desktop) from www.omni/yourcompany and within minutes be up-and-running with an integrated file sharing, storage and communications tool-set. This is particularly important for companies whose employees will be disparately located following the events of last week. In addition to the robust and secure file transferring and search capabilities, the POD is interoperable with Yahoo! and MSN instant messengers. Also, users are able to view and experience numerous multimedia file formats through the POD."
and
"About Omnipod, Inc.
Founded in May 1999, Omnipod, Inc. provides a corporate network tool-set for employees (intranet), partners (extranet) and customers (internet) to view, share, communicate and store information. Streamlined to optimize enterprise performance, the POD application is easy to learn, quick to deploy, simple to integrate and requires minimal maintenance."
The POD Trademark
4.3 The Complaint provides the following information
"Omnipod has registered a trademark for the marks Omnipod, POD: Professional Online Desktop, POD: Personal Online Desktop and Podiverse, among other marks. The mark 'POD' was filed on June 13, 2000, and assigned the serial number 76068419."
The Panel obtained the following information from the United States Patent and Trademark Office trademark electronic search system (TESS) on March 12, 2002.
Application / Registration No
Mark
International Class
Date of Application / Grant
App. 73922272
OMNIPOD + device
35
Filed February 18, 2000
Allowed December 25, 2001
App. 75922271
OMNIPOD + device
9
Filed February 18, 2000
Allowed December 25, 2001
2,528,725
PROFESSIONAL ONLINE DESKTOP*
42
Filed July 7, 2000
Registered January 8, 2002
App. 76084840
PROFESSIONAL ONLINE DESKTOP*
9
Filed July 7, 2000
App. 76084838
PROFESSIONAL ONLINE DESKTOP*
35
Filed July 7, 2000
App. 76069193
PODIVERSE
35
Filed June 13, 2000
App. 76068416
PODIVERSE
42
Filed June 13, 2000
App. 76068415
PODIVERSE
9
Filed June 13, 2000
Allowed May 22, 2001
App. 76068419
POD
9
Filed June 13, 2000
4.4 The asterisked marks record August 29, 2000, as first use in commerce. The remaining applications are filed with intention to use. The application for POD was refused on December 19, 2001.
There is, therefore, no registered US trademark for the mark POD, nor is there a registered US trademark for a mark including the word POD. The Complainant has advanced no claim to common law rights in the trademark POD.
The Domain Name
4.5 The Complaint states that the domain name was purchased by the Complainant for the sum of US$18,000. The WHOIS Search attached to the Complaint, however, shows only the Respondent as the original registrant when the current domain name was created on January 11, 2000. The Panel can only assume that there was a domain name registered prior to January 11, 2000, which was transferred to the Complainant as a result of the acquisition but that the address entered was that of the Respondent [see, paragraph 5.1.5 below]. The Complaint is unclear in this respect and nothing in the Response clarifies it.
The Respondent
4.6 The Response states that the Respondent is involved in the business of "marketing consulting". It gives no further information.
4.7 The Panelist has accessed the domain name in issue which is stated to be under construction and contains the following:
"This site is hosted by Netfirms Web Hosting
COMING SOON
Under Construction
Contact us
For now, here are some other "POD" related sites you may want to visit:
Official site of the Apple iPOD
http:///www.bod/
Body Composition System
A great mobile/Internet communications platform from Singapore Telecom
A B2B Internet based communications application
The Official P.O.D. band site
Professional and Organizational Development Network in Higher Education
Unofficial Chris Vrenna site for NIN fans"
4.8 The Complaint describes the Respondent as "� a former disgruntled employee of the Claimant."
5. The Parties' Contentions
5.1 The Complainant's Case
5.1.1 Identical or Confusingly Similar
The Complainant claims rights in the trademark POD by virtue of a US trademark application for POD [Class 9] filed June 13, 2000; other US trademark applications incorporating the word POD filed during the year 2000; acquisition of the domain name in issue at an unspecified date prior to the events complained of; and first use in commerce on August 29, 2000, of the trademark Professional Online Desktop.
5.1.2 The Complaint states that the domain name in issue is obviously better suited for use in conjunction with its "the POD" software then "as a one page placeholder for a consulting service called Nassef Consulting".
5.1.3 Based on the foregoing, the Complaint asserts that the domain name in issue is identical or confusingly similar to a trademark in which the Complainant has rights.
Rights or Legitimate Interests
5.1.4 The Respondent is (as stated) described as a former disgruntled employee of the Complainant who, while employed by the Complainant was in charge of marketing the Complainant's POD software and assisted in negotiations to acquire the domain name for US$18,000.
5.1.5 Put shortly, the Respondent is accused of misappropriating the domain name in issue by registering his personal contact details rather than those of the Complainant company at the time when the domain name was acquired by the Complainant. As a consequence, notice of the date for renewal was never received directly by the Complainant. Instead, on December 29, 2001 - less than two weeks before the due renewal date - the Respondent sent a single email to an officer of the Complainant asking if the Complainant had any interest in renewing that domain name. [Since the Registrar Verification shows that the domain name in issue was registered on January 11, 2000, and the expiry date as January 11, 2003, the December 29, 2001 date is presumably an error.]
5.1.6 That officer was on vacation at the time and was unable to access the email The Respondent allowed the domain name to expire and then himself re-registered it on the same day, namely January 11, 2000. This the Respondent did in the full knowledge of the Complainant's business, its products and its trademarks, having [as stated in paragraph 5.1.4 above] been in charge of marketing the Complainant's POD software whilst an employee of the Complainant.
5.1.7 The Respondent is making no use of the domain name in issue other than as a "placeholder" [see, paragraph 4.7 above]. The Complaint states:
"Respondent has placed only a single page website on the new "" site and clearly has no connection with Omnipod, the POD software or anything else connected with the word POD."
5.1.8 The Respondent has no registered trademarks for anything containing the word POD.
5.1.9 The Complainant's case is that, in the circumstances, the Respondent has no rights or legitimate interests in the domain name in issue.
Registered and Used in Bad Faith
5.1.10 The assertions set out in paragraphs 5.1.4 to 5.1.9 above are also relevant to this requirement of the Policy. In addition, the Complaint states that since January 11, 2001, in follow up email and telephone correspondence between the parties, the Respondent asked the Complainant to "make an offer" for transfer of the domain name in issue. The Complainant made a written offer of US$35.00, being the price of registration according to the Respondent, but no Response was made to that offer. The Complaint states that the Respondent has told the Complainant in conversation.
"[He] knows what we originally paid for [US$18,000] and that [Complainant's offer] had to be in that range."
5.1.11 In the circumstances, the Complainant asserts that the domain name was registered by the Respondent on January 11, 2001, in bad faith and is being used by the Respondent in bad faith.
5.2 The Respondent's Case
5.2.1 The Complainant's Trademark Rights
The Respondent's case is that the Complainant has no trademark rights in the word POD because:
- the domain name in issue was registered by the Respondent on January 11, 2000, before the Complainant's application on June 13, 2000, to register POD as a US trademark; and
- the US Patent and Trademark Office has issued over 300 trademarks containing the letters POD, including some subsisting registrations for POD simpliciter in the names of third parties.
From the list forming Annex A to the Response, the Panel has carried out a TESS search against registered marks for POD simpliciter which are shown as being live registrations. The results are tabulated below:
US Registration No
Mark
Proprietor
International Class(es)
Dates Filed / Registered
2,391,938
The Pod
D J Livingston & Co Inc
9
Filed January 27, 1998
Registered October 3, 2000
2,210,465
POD and device
Ikepod Watch Company A.G.
14
Filed July 7, 1997
Registered December 15, 1998
2,210,464
POD
Ikepod Watch Company A.G.
14
Filed July 7, 1997
Registered December 15,1998
2,359,019
THE POD
Peapod Inc
35
Filed June 10, 1997
Registered June 20, 2000
2,168,364
Pod (stylised)
POD Hardboards Pty Ltd
28
Filed September 26, 1996
Registered June 23, 1998
2,086.558
POD
UBI Soft Inc
28
Filed March 28, 1996
Registered August 5, 1997
2,388,940
Pod (stylised)
The William John Dickinson et al Partnership
25
Filed June 9, 1994
Registered September 26, 2000
1,861,641
POD
Havant International Ltd
9
Filed July 7, 1997
Registered December 15, 1998
1,863,522
POD
Havant International Ltd
9
Filed July 7, 1997
Registered December 15, 1998
1,805,305
POD
Chrysalis Incorporated
20
Filed March 5, 1991
Registered November 16, 1993
882,329
POD
Baker Perkins Inc
7
Filed December 20, 1965
Registered January 17, 1967
Identical or Confusingly Similar
5.2.2 The Respondent states that it has received no Complaint or enquiry from any customer or potential customer who claims to have been searching for the Complainant's business through the domain name in issue. The only specific enquiries have been from fans of a rock band called POD.
Rights or Legitimate Interests
5.2.3 Because POD is generic - as demonstrated in paragraph 5.2.1 above - the Respondent is entitled to develop a website under the domain name in issue or to sell that domain name.
Registered and Use in Bad Faith
5.2.4 The Respondent points to its email notification to the Complainant of the renewal date of the domain name in issue as indicative of its bona fides. The Respondent says that he waited for a response from the Complainant "� until the very last available moment before the domain would have become available to the public."
5.2.5 The Respondent explains that he is involved in the
"� business of marketing consulting, a wholly different business from that of the Complainant."
and did not register the domain name in issue in order to disrupt the Complainant's business.
5.2.6 The Respondent denies offering to sell the domain name in issue to the Complainant [see, paragraph 5.1.10 above].
6. Discussion and Findings
6.1. The Complainant's Trademark Rights
6.1.1 The Complainant's website refers to its starting in business in May 1999, [see, paragraph 4.1 above]. The Complainant's US trademark application for the PROFESSIONAL ONLINE DESKTOP mark claims first use in commerce of that mark on August 29, 2000 [see, paragraphs 4.3 and 4.4 above].
6.1.2 It is clear from the Complainant's website that the POD is used as a trademark in relation to its Professional Online Desktop Software, which was launched in September 2000, and that it boasts several multinational corporations as users of that product, for example Levi Straus; Mars; Nestlé and McCann-Erikson [see again paragraph 4.1 above].
6.1.3 The Policy does not require that a Complainant's trademark rights must be registered. Trademark rights may arise by virtue of use and reputation, for example common law trademarks. The evidence in the Complaint is flimsy. Refusal of US trademark Application No. 76068419 [see, paragraph 4.4 above] is not, however, fatal to the Complainant. Further, the fact that there are third party US trademark registrations for POD in various classes [see, paragraph 5.2.1] does not preclude the Complainant from having trademark rights in relation to its particular product.
6.1.4 This is, in the Panel's view, a borderline case. The Complaint does not provide the evidence normally expected to support a claim to unregistered trademark rights. On the basis of the material contained in the Complainant's website, it may well be that the Complainant has trademark rights for the word POD for the purpose of the Policy. Although the, apparently unsuccessful, US trademark application for POD was not filed until June 2000, and use of that mark did not begin until September 2000, if the Complainant has trademark rights in POD, those rights would not in the Panel's view necessarily be defeated by the earlier registered [January 2000] domain name in issue.
6.1.5 However, it is not for this Panel to speculate as to what the position may, or may not, be. There is inadequate evidence in the Complaint to support s finding that the Complainant has trademark rights in the mark POD and for that reason the Complaint must fail.
6.2 Identical or Confusingly Similar
In the absence of finding that the Complainant has trademark rights in the POD mark for the purposes of the Policy, it is obviously not necessary to comment in relation to this requirement.
6.3 Rights or Legitimate Interests
6.3.1 Again, since the Complaint fails to meet the requirement of paragraph 4a (i) of the Policy, it is not necessary to decide this issue. However, had the Complainant been able to satisfy the requirement of paragraph 4a(i) of the Policy, the Panel would have held in the Complainant's favour under paragraph 4a(ii) of the Policy.
6.3.2 In this respect, the Respondent does not deny that
▪ the Complainant purchased the domain name in issue for US$18,000.00;
▪ he, the Respondent, was involved in the negotiations leading to that acquisition at a time when he was employed by the Complainant;
▪ he, the Respondent, entered his own particulars as the contact details for the domain name rather than those of the Complainant who had beneficially acquired that domain name;
▪ he gave the Complainant less than 2 weeks notice of the due date for renewal of that domain name;
▪ he, as a former employee of the Complainant who had been in charge whilst employed by the Complainant for marketing its POD product, nevertheless renewed or registered (it is not clear) the domain name in his own name; and
▪ now asserts that he is free to use that domain name for his own purposes or to sell it to another party.
6.3.3 Plainly, the Respondent cannot bring himself within any of the circumstances set out in paragraph 4c of the Policy which would demonstrate his rights or legitimate interests in the domain name in issue. The equities are all in the Complainant's favour.
6.4. Registered and Used in Bad Faith
6.4.1 Again, as the Complaint fails to meet the first requirement of paragraph 4a of the Policy, it is not necessary to decide this issue. However, if the suggestion in the Response is that the Complainant voluntarily abandoned any claim to the domain name in issue by failing to respond within the 13 days notice of the due renewal date given by the Respondent to the Complainant [see, paragraphs 5.1.5: 5.1.6 and 5.2.4 above], then the Panel rejects such suggestion.
6.4.2 There is a dispute between the parties [see, paragraphs 5.1.10 and 5.2.6 above] as to whether the Respondent offered to sell the domain name to the Complainant, whether for something in the region of US$18,000.00, or at all. However, were that the only difference between the parties, it would not - had the Complainant met the threshold of paragraph 4a(i) of the Policy - have precluded the Panel from making a finding in favour of the Complainant under paragraph 4a(iii) of the Policy
6.5. Other Proceedings
6.5.1 The Complaint states that the Complainant is preparing a breach of contract lawsuit against the Respondent. It does not say whether misappropriation of the domain name in issue alleged in this Complaint will form a part of that lawsuit. This may well be a possibility. The Panel can only speculate since the Center has not been notified that any such legal proceeding has been commenced [Rules, paragraph 18].
6.5.2 Is it open to the Complainant to bring a fresh Complaint under the Policy in order to deal with the deficiencies in this Complaint? In this respect, the Panel refers to WIPO Case No. D2001-1041 [Jones Apparel] which summarises various decisions under the Policy concerning the re-litigation of a Complaint. This administrative proceeding is, in the Panel's view, closer to the factual situation in the Furrytails case [NAF Case No. 96532] and the Jones Apparel case. Here the Complaint is so lacking in substance that it would not be practical for the Panelist to request further statements or documents pursuant to Rules, paragraph 12. That provision is not intended to permit a Panelist to advise a party how to write its Complaint or Response, as the case may be. Although as stated above, this is a case where the equities appear to be firmly in the Complainant's favour, it is for the Complainant properly and fully to plead its Complaint. However, the Panel must make it clear that should the Complainant decide to file a further Complaint, it will be for a future Panelist, if and when appointed, to decide on the admissibility of that Complaint.
7. Decision
The Complainant has not made out its case under paragraph 4a(i) of the Policy and for that reason the Complaint is dismissed.
David Perkins
Sole Panelist
Dated: April 20, 2002
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