WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Computer Associates International, Inc. v. TvT, Inc.
Case No. D2003-0023
1. The Parties
The Complainant is Computer Associates International, Inc., a Delaware corporation with its principal place of business in Islandia, New York, United States of America. The Complainant is represented by Mr. Harold J. Milstein of Heller Ehrman White & McAuliffe LLP, Menlo Park, California, United States of America.
The Respondent is TvT, Inc., a company located in Fort Lauderdale, Florida, United States of America. The Respondent is represented by Mr. Paul M. Renner of Atkinson, Diner, Stone, Mankuta & Ploucha, P.A. of Hollywood, Florida, United United States States of America.
2. The Domain Name and Registrar
The disputed domain name is and is registered with Network Network Solutions Incorporated (NSI) of Dulles, Virginia, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 10 (email) and 13 (hard copy), 2003. On January 10, 2003, the Center transmitted by email to NSI a request for registrar verification in connection with the domain name at issue. On January 14, 2003, NSI transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.
On January 15, 2003, the Center sent a notification of Complaint deficiency to the Complainant because the Complainant mistakenly had named the registrar�s parent company Verisign as the registrar. On January 16 and 17, 2003, (email and hard copy), the Complainant submitted an amendment to the Complaint correcting the deficiency.
The Center verified that the Complaint together with the amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules of Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on January 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 9, 2003. The Response was filed with the Center on February 7 and 10, 2003, (email and hard copy).
On January 29, 2003, the Complainant submitted a request to the Center to file a supplement to the Complaint. On the same day, the Respondent wrote to the Center asking that the Complainant�s request be denied. Rule 12, Further Statements, instructs: "In addition to the Complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." Having reviewed the Complaint and the Response, the Panel has decided not to request further filings from either side.
The Center appointed Mr. Dennis A. Foster as Panelist in this matter on February 18, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules paragraph 7.
4. Factual Background
The Complainant is a well-known provider of computer software. In particular, during the past several years, the Complainant has offered a computer anti-virus software. The Respondent is a company specialized in internet marketing. The parties concluded an agreement on May 3, 2002, that provided for the Respondent to assist the Complainant in selling its anti-virus software. The Respondent registered the disputed domain name, , on May 28, 2002.
5. Parties� Contentions (Summarized)
Complainant
Since at least as early as May 2001, Complainant has continuously used the Ezantivirus mark in connection with its computer virus protection software.
As a consequence of widespread use and extensive sales, advertising and marketing activity by Complainant over the last one and-a-half years, the Ezantivirus and other EZ-branded marks have become well-known throughout the world to identify Complainant�s leading-edge computer software.
Upon information and belief, Complainant recently learned that Respondent had registered the domain name on or about May 28, 2002, well after Complainant�s first use of its Ezantivirus mark and long after consumers came to associate Ezantivirus with Complainant�s computer software.
The domain name is identical and thus confusingly similar to Complainant�s Ezantivirus mark. Such domain names�fully incorporating a well-recognized trademark as a domain name�have been found to be confusingly similar under the Policy. (Microsoft Corporation v. Amil Mehrotra, WIPO Case No. D2000-0053, April 10, 2000), (the panel found that "M" was confusingly similar to the Microsoft trademark and ordered that the domain name be transferred to the Complainant).
Upon information and belief, on or about May 28, 2002, Respondent registered the domain name less than 30 days after executing the OEM Agreement with Complainant, and despite provisions in the OEM Agreement expressly prohibiting such registration by Respondent.
Respondent�s registration of the domain name is likely to confuse internet users seeking to purchase, obtain further software updates or services, or access information about Complainant�s Ezantivirus software into mistakenly believing that the content located at Respondent�s domain originates from or is authorized by Complainant.
Despite the OEM Agreement between Complainant and Respondent authorizing certain, limited uses of Complainant�s Ezantivirus mark by Respondent, Respondent�s registration and use of Complainant�s Ezantivirus mark as a domain name is unauthorized because such registration and use are: (1) expressly prohibited by the OEM Agreement, (2) otherwise outside the scope of the grant of Complainant�s license to Respondent, and (3) infringements of Complainant�s Ezantivirus mark.
As of January 9, 2003, the website was not operational, despite the fact that the domain name was registered by Respondent over seven months ago. As of the time of commencement of this domain name dispute, January 9, 2003, the web site located by the domain cannot be accessed (Exhibit E).
By virtue of the OEM Agreement, Respondent has expressly agreed that it does not have any legitimate interests in the domain name.
In addition to Respondent�s covenant not to register or claim ownership of the domain name, Complainant only granted Respondent limited rights to use the Ezantivirus mark. Specifically, pursuant to and during the course of the OEM Agreement, Respondent only obtained a limited license to use certain Complainant marks in order to market certain of Complainant�s software on the "" web site. Complainant did not, however, grant Respondent the right to use any of Complainant�s marks on any other web site or domain.
Respondent�s registration of the domain name, therefore, exceeded the scope of the license granted by Complainant in the OEM Agreement. Accordingly, Respondent never obtained any right to the domain name.
Respondent�s intention to use Complainant�s Ezantivirus mark in connection with the promotion of software and related online and computer services (as detailed in the OEM Agreement)�all of which are for commercial gain�clearly demonstrate that Respondent has also not made any legitimate noncommercial or fair use of the domain name.
Upon information and belief, Respondent is not commonly known by the domain and, thus, does not have any rights or legitimate interests in the domain name on that basis.
Respondent�s almost immediate registration of the domain name, despite its actual knowledge of Complainant�s rights in the Ezantivirus mark and Respondent�s express agreement not to infringe those rights pursuant to the OEM Agreement, constituted not only a breach of the OEM Agreement less than one month after entering into it, but also demonstrates Respondent�s bad faith registration and use of the domain name.
Respondent�s bad faith is further evidenced by its refusal to transfer the domain name to Complainant.
Counsel for Complainant and representatives from Respondent discussed via telephone and email the issues raised in counsel for Complainant�s October 1, 2002, letter. These discussions culminated in an October 22, 2002, e-mail from representatives for Respondent issuing a ransom demand for the domain to Complainant.
Respondent has also intentionally registered and used the domain name in order to prevent Complainant from owning and using it.
Respondent�s efforts to sell the domain name at a profit clearly demonstrate that Respondent�s only intention in registering the domain name was to hold the domain ransom in an effort to earn a profit from it from Complainant, thereby illustrating Respondent�s bad faith.
The disputed domain name should be transferred to the Complainant.
Respondent
While the Respondent agrees that the domain name is identical or confusingly similar to a mark through which the Complainant sells its software, the facts and exhibits demonstrate that Respondent had legitimate interests in the domain name and has neither registered nor used the domain name in bad faith.
As a threshold matter, even if the Panel were to construe all contested facts in favor of Complainant, the contractual dispute between the parties places this matter outside the scope of the Policy, whose purpose is to curb abusive domain name registration and use. (Hachette Filipacchi Media U.S. Inc. d/b/a Showboats International and Eyeball International, Inc. v. Urthere Productions, Inc. and Brad Nolan, WIPO Case No. D2002-0143, May 30, 2002).
In 2002, Complainant expressed interest in using Respondent�s services to enhance its marketing channel and Internet sales program for Complainant�s small office/home office and consumer line of software and to increase those sales through multiple means including a promotional website, email solicitations, consultation on branding issues, and other material support. Consequently, Complainant solicited Respondent through its Memorandum of Understanding which is attached as Exhibit A. The MOU established Complainant�s solicitation of Respondent to develop an effective marketing and sales program for Complainant�s software through the Internet. Thereafter, on May 3, 2002, the parties entered into a written contract called the OEM Agreement, which is attached as Exhibt B.
From review of the MOU and the parties�subsequent OEM Agreement, it is clear that Complainant sought Respondent�s services and Respondent, in turn, agreed to market and sell only Complainant�s software through its promotional site. Under the express terms of the Agreement, Complainant granted Respondent the "right to use the marks and logos identifying the Licensed Software." (OEM Agreement, Section 3.01).
The parties� OEM Agreement is unclear on the specific question of whether Respondent can register a particular domain name. The OEM Agreement addresses itself to the "CA Marks," but does not specifically address domain names. There also are provisions in the OEM Agreement supporting the Respondent�s right to use the "CA Marks." Article 1 sets forth a grant of rights to Respondent and includes, in pertinent part, that: "CA grants the right to use the marks and logos identifying the licensed software (the "CA Marks") but not in any other aspect of OEM�s business, subject to Section ��"
Respondent identified a number of deficiencies in Complainant�s existing marketing and sales strategy. Among those deficiencies, Complainant used the domain which was a confusing name for the marketing and sale of its software. The MOU and OEM Agreement required Respondent to market the licensed software through a separate promotional website (also known as a "hot site") (OEM Agreement, Section 1.01(a). The requirement to develop and launch a site presupposed that Respondent would need a domain name to market and sell the software to the public.
Respondent remained concerned that the domain name was insufficiently connected to Complainant�s software to develop an association in the public�s mind, and thereby had hampered potential sales for Complainant. For its own site, Respondent wanted a domain name more related to the software and its sales program. Accordingly, Respondent�s Dan Beyer contacted Complainant�s Stephen Gohres, Assistant Vice President for eBusiness Marketing, to inquire as to why Complainant had not obtained the domain name. Mr. Gohres responded that the name could not garner enough trademark protection to make it worthwhile to acquire, and therefore, Complainant did not intend to register or use as a domain name to sell its software. (Affidavit of Dan Beyer, paragraph 6 attached as Exhibit C).
Prior to and after registering the domain name, Respondent performed substantial work to develop its site, greatly improving its look and feel compared to the text based approach used at Complainant�s . The parties continued to correspond with each other regarding Respondent�s progress and Complainant praised Respondent for its work. A copy of several items of email correspondence between the parties is attached as Exhibit D.
For some time, Respondent used the domain name in connection with the materials it submitted to Complainant, and Complainant did not object. Specifically, Respondent told Complainant to access and review their latest iterations of the website at ezantivirus. This review process, in which Complainant accessed Respondent�s work via , was repeated on approximately a half dozen occasions, without objection (Affidavit of Dan Beyer, paragraph 7).
After Respondent had completed its work and developed a website, an email solicitation script, and other graphic advertising material for Complainant, and just prior to Respondent�s public launch of its sales program, Complainant objected to Respondent�s use of and refused to honor its obligations under the Agreement. In fact, Complainant used the domain name issue as a pretext to avoid payment of royalties to Respondent that would result from the sales program.
The reality of the parties� business relationship shows that Respondent had legitimate interests in the domain name, and registered and used the name in good faith, both to protect Complainant from an adverse third party and to further Respondent�s best efforts to promote and sell Complainant�s software.
Complainant only raised an objection after Respondent had continued its demonstrable preparations to use the domain name in connection with the bona fide offering of Complainant�s software pursuant to the OEM Agreement (Exhibit B).
Since Respondent registered the domain name in good faith, based on its contractual rights and its understanding that Complainant did not object to same, Complainant can not establish that the domain name was registered in bad faith. Likewise, the facts rebut Complainant�s claim that Respondent used the domain name in bad faith. If a prospective purchaser wishes to buy Complainant�s software, that purchaser is directed to Complainant�s own web page. Thus, if someone were to purchase the software through Respondent�s site, the registration information and purchase funds would go directly to Complainant.
The Complainant contends the Respondent attempted to "ransom" the disputed domain name for $30,000 and mentions in Complaint paragraph 33 but does not exhibit a specific email of October 22, 2002. This email (which Respondent attaches as Exhibit Exhibit G) correspondence shows that Respondent never linked any settlement demand to an exchange of the domain name or offered to sell the domain name for any sum.
The disputed domain name should remain registered to the Respondent.
6. Discussion and Findings
Under the Policy, the Complainant may prevail and obtain transfer of the disputed domain name, , if it can show per paragraphs 4(a)(i-iii):
- the 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 was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant does not have a registered trademark in the disputed domain name . However, the Complainant has shown that it has used the mark Ezantivirus to market its computer antivirus software since mid-2001. Relying on this proof, the Complainant is claiming common law use rights in the mark Ezantivirus. There is wide support in Policy decisions for the Complainant�s contention (for example, Tuxedos By Rose v. Hector Nunez, FA95248 (NAF August 17, 2000).
For its part, the Respondent concedes that the Complainant does have common law use rights in the disputed domain name (the Response, paragraph 25). Therefore, the Panel finds the disputed domain name, , is identical to a trademark in which the Complainant has rights. Hence, the Complainant has met its burden of proof under Policy paragraph 4(a)(i).
Rights or Legitimate Interests
The Complainant admits that it has a contract and business relationship with the Respondent. However, the Complainant contends that the contract�s express provisions disallow the Respondent from registering the disputed domain name. According to the Complainant, the relevant provision of the parties� May 3, 2002, contract at article 3.02(e) provides:
"OEM (the Respondent) shall not register or apply for registration of any Mark or any name or mark that incorporates any CA (the Complainant) Mark anywhere in the world."
The Complainant characterizes the rights it granted to the Respondent as follows (the Complaint, paragraph 27):
"In addition to Respondent�s covenant not to register or claim ownership of the domain, Complainant only granted Respondent limited rights to use the Ezantivirus mark. Specifically, pursuant to and during the course of the OEM Agreement, Respondent only obtained a limited license to use certain Complainant marks in order to market certain of Complainant�s software on the "tvt" web site. Complainant did not, however, grant Respondent the right to use any of Complainant�s marks on any other web site or domain."
Thus, the Complainant contends the Respondent can not claim it is bona fide offering goods and services using the disputed domain name because this would violate the parties� contract. The Complainant further contends the Respondent can not claim legitimate rights and interests under the Policy at paragraphs 4(c)(ii) or (iii) because the Respondent has not been commonly known by the domain name nor is the Respondent making fair use of the domain name.
In point of fact, the Respondent has not attempted to show it has legitimate rights and interests under the Policy at 4(c)(ii) or (iii). Instead, the Respondent has concentrated on 4(c)(i), i.e.: "before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services";
The Respondent contends the Complainant hired the Respondent to develop and implement a plan to enhance the internet marketing and sales of the Complainant�s anti-virus software Ezantivirus. To this end, the Respondent developed a dedicated web site using the disputed domain name, which the Respondent registered on May 28, 2002. The Respondent has exhibited a number of emails subsequently exchanged with the Complainant in which the Complainant seems to have approved of the Respondent�s efforts. In any case, for many months the Complainant did not object to the Respondent�s registration of the disputed domain name (Respondent Exhibit D).
The first evidence of the Complainant�s dispute with the Respondent is a letter from the Complainant to the Respondent dated October 1, 2002. (Complaint Exhibit F) in which the Complainant demands transfer of the disputed domain name, but in which the Complainant also refers to the Respondent as a "business partner." As Respondent contends, at that time there appears to have developed a contract dispute between the parties. However, the Panel does not accept the Respondent�s contention that contract disputes over a domain name automatically prevent the Panel from using the Policy to resolve the dispute. It depends on how complex the contractual relation is between the parties.
The Panel finds it is clear that, at the time the Respondent registered the disputed domain name, it did so with the Complainant�s knowledge and approval. Therefore, the Respondent has shown that it satisfies the requirements of Policy paragraph 4(c)(i). Not only was the Respondent using the disputed domain name to make a bona fide offering of services, it was offering those services to none other than the Complainant itself.
The Policy requires that the Complainant prove Policy paragraphs 4(a)(i-iii) inclusively. As the Complainant was unable to show, per 4(a)(ii), that the Respondent does not have legitimate rights or interests in the disputed domain name, the Panel need not proceed to a discussion of bad faith under Policy paragraph 4(a)(iii).
7. Decision
The Panel has found that the Complainant does have common law trademark rights in the disputed domain name . However, the Panel also has found that the Respondent has legitimate rights and interests in the disputed domain name because the Respondent was using the domain name for a bona fide offering of services to the Complainant itself per Policy paragraph 4(c)(i).
Per paragraphs 4(i) of the Policy and 15 of the Rules, this leads the Panel to order that the disputed domain name remain registered to the Respondent, TvT, Inc.
Dennis A. Foster
Sole Panelist
Dated: March 4, 2003
Full & Egal Universal Law Academy