WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novatia LLC v. Matt Hite
Case No. D2007-0728
1. The Parties
Complainant is Novatia LLC, a company with offices in New Jersey, United States of America, represented by William H. Eilberg, Esq., authorized representative, United States of America.
Respondent is Matt Hite, an individual with an address in Redwood City, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 18, 2007. On May 21, 2007, the Center transmitted by email to GoD a request for registrar verification in connection with the domain name at issue. On the same day, GoD transmitted by email to the Center its verification response, which confirmed that Respondent is listed as the registrant, provided contact information for the administrative and technical contacts, and confirmed several details of the registration agreement.
In response to a notification by the Center that the Complaint and cover sheet had not been submitted in electronic form, Complainant provided the Center with electronic versions of both documents. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2007. The Response was filed with the Center on June 13, 2007.
The Center appointed Debra J. Stanek as the sole panelist in this matter on June 27, 2007. 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
Complainant owns a federal trademark registration for the mark NOVATIA for products and services related to “mass spectrometers, auto samples, chromotographs, and nuclear magnetic resonance spectrometers.” Complainant has used its NOVATIA mark since 2001 and also used the term as part of its corporate name.
Respondent registered the domain name in 1998. Currently, visitors to the site are redirected to the “” website.
5. Parties' Contentions
A. Complainant
Complainant makes the following contentions:
Complainant has used its NOVATIA mark since 2001 for products and services “using primarily mass spectrometry and nuclear magnetic resonance spectroscopy for chemical and biological research.”
The disputed domain name is identical to Complainant's mark.
Respondent has no rights or legitimate interests in the disputed domain name.
There is no evidence that Respondent is using or has used the domain name in connection with any business; visitors to the site are redirected to the “” website, which makes no mention of the term “novatia.” A Google search for the term “Novatia Studios” yields one page, but Complainant was unable to find the page through a link from the “www.” or “” sites.
There is no evidence that Respondent is commonly known by the domain name.
Respondent registered and is passively holding the disputed domain names in bad faith because:
Except for the single reference located above, Respondent has apparently not used the term “novatia.”
In 2003, Respondent rejected Complainant's offer to purchase the domain name for $2,000. In 2007, Respondent rejected Complainant's offer to purchase the domain name for $4,000. Because Respondent had indicated that he might be willing to sell the domain name if the price were high enough, “it is clear that Respondent does not really care about the name per se” and is “really holding the domain name for ransom.”
Conceding that Respondent's registration predates Complainant's trademark rights, Complainant asserts that even if Respondent establishes that he did not register the domain name in bad faith, the Panel should, by analogy to the presumption of abandonment that arises under U.S. trademark law when a mark is not used for a period of time, not permit Respondent to hold the domain name without using it.
B. Respondent
Respondent makes the following contentions:
Respondent concedes that disputed domain name is identical to Complainant's mark.
Respondent has rights or legitimate interests in the domain name. He registered the domain name in 1998. At the time, he intended to create his own recording label and music production studio under the name “Novatia Studios”, as a sideline to his work as a deejay.
From 1998 to 2001, the “www.” website merely displayed a logo for the server that hosted the domain. From 2001 to March 2003, Complainant created and operated a website for Novatia at the subdomain . The site was password protected and hosted audio files for Respondent's clients, potential clients, friends, and mailing list subscribers. Respondent used the domain to promote his services. Respondent asserts that use of the nonstandard “studios” prefix explains why a search of Internet archives does not show the history of the site. In March 2003, the content of the “www.” website mirrored the content of Respondent's other website, “.” The content included a blog and streaming audio of his music mixes. It was not until 2004 that the site began redirecting visitors to Respondent's “” website. For a time the “” website contained a section labeled “About Me” that specifically referenced Respondent's release of music on the “Novatia” label, but the site does not currently include an “About Me” section.
Respondent intends to build a dedicated website that is separate from the “” site, but his circumstances have not yet permitted him to do so.
Respondent did not register and is not using the domain names in bad faith.
He was unaware of Complainant's intention to use the name or mark “Novatia” when registering the name in 1998.
Respondent is not “passively holding” the domain name, but instead has actively used it since it was registered. Similarly, Respondent has used the name “Novatia” and “Novatia Studios” in email messages to subscribers to his mailing list, in contracts, on CDs, and correspondence. Respondent provides copies of a booking agreement, promotional CDs, and other materials using the name.
Respondent did not solicit either of Complainant's offers to purchase the domain name. Respondent characterizes Complainant's 2007 offer as extortionate because Complainant indicated that it would file a complaint under the UDRP if Respondent did not accept the offer. In fact, Respondent has also received (and rejected) an offer from another entity that uses the name “Novatia.”
As further evidence of Respondent's good faith, he points to his offer to host a “splash page” that offers to redirect visitors to Complainant prior to being redirected to “.”
6. Discussion and Findings
In order to prevail, Complainant must prove
(i) That the disputed domain name is identical or confusingly similar to Complainant's mark; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent's bad faith registration and use, see Policy, paragraph 4(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the NOVATIA mark by providing proof of its federal trademark registration. As Respondent essentially concedes, the disputed domain name is identical to Complainant's mark. In considering identity, the “.com” top-level domain is not relevant.
Accordingly, the Panel finds that Respondent's domain name is identical to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Here, Respondent has clearly established his rights and legitimate interests in the domain name. The documentary evidence presented by Respondent shows that he has used the domain name and the name “Novatia Studios.” That evidence includes email messages dating back to 2001, a page from his “” website, an announcement, a contract (on “Novatia Studios” letterhead), and copies of the labels on promotional CDs.
Accordingly, the Panel finds that Respondent has established rights and legitimate interests in the domain name.
C. Registered and Used in Bad Faith
In light of the conclusion that Complainant has not established the second element, it is not necessary to address the issue of bad faith. However, the Panel notes its view, consistent with the consensus view, that as a general rule, a domain name that is registered before a trademark right has been established cannot be found to have been made in bad faith. See Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1. The Panel finds Complainant presented no evidence of any circumstances that would justify a departure from that general rule here.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Sole Panelist
Dated: July 11, 2007
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