WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M Inc. v. Hawkins, Cloward & Simister
Case No. D2007-1171
1. The Parties
The Complainant is M, Inc., United States of America, represented by Trevor H. Francis, United States of America.
The Respondent is Hawkins, Cloward & Simister, L.C. United States of America, represented by Ray Quinney & Nebeker, P.C., United States of America.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2007. On August 10, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On August 13, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint 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 for 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 the proceedings commenced on August 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2007. The Response was filed with the Center on September 11, 2007.
The Center appointed Dennis A. Foster as the sole panelist in this matter on September 26, 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.
On September 11, 2007, the Complainant requested permission to submit a supplemental filling. Having read the Complaint and the Response, the Panel finds there is nothing in the Response that might have surprised the Complainant, and that the Complainant is not offering important new information. Per paragraph 12 of the Rules, the Panel will not allow supplemental filings.
4. Factual Background
The Complainant operates accounting services in the United States of America and uses a registered service mark, MYCPA.COM, INC. (United States Registration No. 2,548,864, March 19, 2002). The registration was filed on November 18, 1999, and the Complainant’s first use of the mark occurred after that.
The Respondent registered the disputed domain name on November 8, 1995, and registered the disputed domain names and on March 29, 2002. The first disputed domain name has been used by Respondent since 1998 in connection with its accounting services, which are licensed in the state of Utah in the United States of America, while the latter two names have never been put to use.
In 2002 the Complainant and the Respondent engaged in inconclusive negotiations regarding the transfer to the Complainant of the disputed domain name .
5. Parties’ Contentions
A. Complainant
The Complainant wholly owns the United States of America Corporation M, Inc. which renders Certified Public Accounting services. It also owns a United States Patent and Trademark Office (“USPTO”) registration for the service mark “MYCPA.COM, INC.”, dated March 19, 2002. The latter is based on a registration filing made on November 18, 1999 and contains a First Use in Commerce date of January 9, 2000.
The Complainant’s service mark has received extensive media advertising support in Southern California in the United States of America, and Internet advertising support throughout the rest of the world.
The Respondent registered the disputed domain names and on March 29, 2002, only one day after the Complainant notified the Respondent of the Complainant’s intellectual property rights in MYCPA.COM, INC. Furthermore, the Respondent has not used those names in commerce since that date.
The Respondent has failed to register a domain name that corresponds to its business name. It is not licensed to render certified public accounting or consulting services anywhere in the United States of America under any name similar to any of the disputed domain names.
Subsequent to the Complainant’s notice to the Respondent of the Complainant’s rights in its service mark, the Respondent offered to entertain a reasonable offer for the disputed domain name . However, the Respondent rejected the Complainant’s offer of $2,500 USD as well as several subsequent higher offers by the Complainant, providing conclusive evidence of the Respondent’s bad faith.
All of the disputed domain names are confusingly similar to the Complainant’s mark, in that the distinguishing feature of each of the domain names, “mycpa”, is identical to the distinguishing feature of the mark. The addition of the gTLDs, .com, .bz or .tv, does not lessen the likelihood of public confusion.
The Respondent cannot claim to be using the disputed domain names to conduct a bona fide offering of services because it is not legally licensed to operate in the state of Utah (or any other state in the United States of America) under any name which is similar to any of those domain names.
The Respondent is not commonly known by any of the disputed domain names.
The Respondent has not made any noncommercial or fair use of the disputed domain names.
The Respondent registered and is using the disputed domain names in bad faith as evidenced by the Respondent’s solicitation of a sale of the disputed domain name . The Respondent refused the Complainant’s offers of $2,500 USD or more for the name, a price which far exceeded the Respondent’s registration and renewal costs from 1995 to 2002 during which period the Respondent owned said name. Furthermore, the Respondent’s failure to use the other two disputed domain names in any way is evidence of bad faith registration and use of those names.
B. Respondent
The Complaint is brought in bad faith and the Complainant is guilty of reverse domain name hijacking.
The Respondent registered the disputed domain name and made a bona fide use of that name in connection with a website prior to the Complainant’s use of its claimed service mark. Thus, it is impossible that the Respondent registered the domain name in bad faith.
The Complainant’s long delay in filing this Complaint, five years after its knowledge of the Respondent’s use of the disputed domain name , is further evidence of the Complainant’s bad faith in bringing this action.
The Complainant has no rights in its alleged mark because it is generic in nature. CPA is an acronym for “Certified Public Accountant” and the addition of the word “my” before that acronym would not identify anyone, including the Complainant, as the unique provider of accounting services.
Not only did the Respondent register on November 8, 1995 (and use it for a website by June, 1998), a third party registered the domain name on February 18, 1998, prior to the Complainant’s use of its claimed service mark, MYCPA.COM, INC.
The Complainant’s mere contention of “extensive advertising” relating to its supposed service mark is insufficient evidence of its continuous of use of that mark.
The Complainant improperly used the symbol � in conjunction with its purported service mark before having received a valid USPTO registration for that mark. This action constitutes a fraud on the public and should preclude the Complainant from relying on rights to the mark in this proceeding.
The disputed domain names are not confusingly similar to the Complainant’s claimed marks as evidenced by the change in the Complainant’s USPTO service mark application from MYCPA.COM to MYCPA.COM, INC. In doing so, the Complainant recognizes the important distinction in adding “INC” to the prospective mark of MYCPA.COM.
The Respondent has rights and legitimate interests in the disputed domain names because it registered and put to use the domain name by June 1998, prior to both the Complainant’s use of its supposed service mark (1999) and before its notification to the Respondent of any sort of dispute (2002).
The Respondent has become identified with its domain name through its use for more than ten years in connection with the provision of accounting services.
The Respondent has not used the disputed domain names and , but did make plans to register them for possible use prior to the Complainant’s communication with the Respondent in March, 2002. Due to the dispute raised in that communication, the Respondent has refrained from using the two names.
The Respondent operates its accounting services per a license from the state of Utah in the United States of America, and employs the disputed domain name to facilitate consumer access to those services, not as an alternate name for the Respondent.
Since the Respondent registered the disputed domain names and automatically before any notice from the Complainant, they were not registered in bad faith.
The Respondent did entertain offers from the Complainant to buy the name , but all the while maintained its legitimate rights to that name. There was no bargaining over the name . As to , the Respondent offered its availability for the applicable transfer fee, but the Complainant declined to pay. None of the foregoing actions constitutes bad faith on the part of the Respondent.
Before filing of the Complaint, the Respondent made the Complainant aware that the Respondent registered the disputed domain name years prior to any use of the Complainant’s supposed service mark. Furthermore, simple research into domain name registration would have revealed to the Complainant the Respondent’s registration of that name prior to the Complainant’s application to register its claimed mark. For these reasons alone, the Complainant’s filing is in bad faith and should be recognized as reverse domain name hijacking.
6. Discussion and Findings
Per Policy paragraphs 4(a)(i-iii), the Complainant may prevail in this administrative proceeding and gain possession of the disputed domain names , and if the Complainant can demonstrate the following:
- The disputed domain names are 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 disputed domain names; and
- The disputed domain names were registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has presented the Panel with evidence of the Complainant’s USPTO registration for the service mark MYCPA.COM, INC. Many prior panels have held that registration of a mark provides conclusive or strong prima facie evidence of a complainant’s rights in the mark. See, Ticketweb Inc. v. Domains Ventures, NAF Case No. FA654538 (April 20, 2006) (“Complainant’s registration of its TICKETWEB trademark with the USPTO establishes its rights in the mark pursuant to the Policy, paragraph 4(a)(i).”); and The Cyberbingo Corporation v. 207 Media Inc.,WIPO Case No. D2005-0714 (October 4, 2005), (“This Panel believes that the Registered Trademarks for CYBERBINGO are prima facie evidence of validity…”). The Panel concurs with these rulings, and finds that the Complainant does have rights in the MYCPA.COM, INC. service mark.
As the Complainant contends, all of the disputed domain names are nearly identical to the Complainant’s service mark. All of the names and the mark are composed primarily of the English word “my” followed by the letters “cpa,” which is the generally recognized English language acronym for “certified public accountant.” The inclusion and/or omission of the various endings, “.com”, “.bz”, “.tv” and “inc.”, do not measurably change the confusing similarity both between the disputed names themselves and between the disputed domain names and the Complainant’s service mark. See, for example, SIGARMS, Inc. v. Sigsauer Dot Com, NAF Case No. FA1024240 (August 9, 2007) (where the panel found that, “…the , , and domain names are identical to Complainant’s SIG SAUER mark pursuant to the Policy at paragraph 4(a)(i).”); and Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429 (June 25, 2000).
As a result of the above, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c)(i) of the Policy expressly provides that the Respondent may demonstrate its rights or legitimate interests in a disputed domain name if, before any notice to the Respondent of the dispute, it can show use 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. In this case, the Respondent has furnished persuasive evidence of its contention that the Respondent registered (1995) and put into use (1998) the disputed domain name before the Complainant began using its service mark (late 1999 or early 2000).. Furthermore, as the Respondent is a CPA firm, its use of this domain name to facilitate the provision of its accounting services connects the name to a bona fide offering of services.
Due to its non-use of the remaining two disputed domain names, and , the Respondent cannot maintain a similar argument with respect to those names. Thus, the criteria cited in paragraphs 4(c)(ii) and 4(c)(iii) of the Policy do not apply in this case to establish the Respondent’s rights or legitimate interests in those disputed domain names. However, the Panel finds that the Respondent, in demonstrating its rights and legitimate interests in , has established a priori its legitimate rights and interests in the names and noting that those domain names are virtually the same as , and that the Panel finds that the Respondent’s statements regarding its plans to register these domain names for possible use in connection with accouting services prior to communication with the Complainant to be reasonably credible in the circumstances.
Accordingly, the Panel rules that the Complainant has failed to discharge its burden to prove that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
As the Complainant, who must establish all elements of paragraph 4(a) of the Policy to prevail in this proceeding, has failed to meet its burden of proof with respect to paragraph 4(a)(ii), the Panel finds it unnecessary to analyze whether the Respondent registered and is using the disputed domain names in bad faith.
D. Reverse Domain Name Hijacking
The Respondent has requested that the Panel issue a ruling of reverse domain name hijacking against the Complainant per the Rules, paragraph 15(e). It has been established in prior UDRP rulings that a panel may so rule in cases where the disputed domain name registration precedes the registration for the trademark at issue. See Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM,WIPO Case No. D2006-0905 (October 10, 2006); and Limited v. Alton L. Flanders,WIPO Case No. D2004-0047 (April 8, 2004) (“In the Panel’s view such a finding [reverse domain name hijacking] is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark”).
In this case, the Complainant alludes in its own Complaint to Respondent’s registration of in 1995. The Respondent presents solid evidence of its use of that name for a website by 1998. The Complainant admits its first use of its service mark occurred no earlier than late 1999 and that it filed for registration with the USPTO on November 18, 1999. Ergo, the registration of this disputed domain name happened a full four years before the Complainant filed for registration or began using the service mark it claims was infringed. Moreover, the Panel cannot help but notice that the service mark, MYCPA.COM, INC., includes within it the gTLD, “.COM,” which indicates that the Complainant surely must have been aware of general Internet usage and practice and, as the Respondent suggests, must in all likelihood have been aware of the prior registration of , a domain name that mirrors the service mark. In fact, the Panel is of the opinion that the service mark was probably altered to include “INC.” precisely for that reason. In any event, the Respondent certainly made the Complainant aware of all the preceding facts in 2002, five years before the Complainant’s initiation of this proceeding. In short, this foreknowledge on the part of the Complainant amounts to a bad faith filing of this Complaint and compels the Panel to find for the Respondent on this issue in line with the cases cited above at least in relation to the disputed domain name .
7. Decision
For all the foregoing reasons, the Complaint is denied. On the issue of reverse domain name hijacking, the Panel declares that the Complaint has been brought in bad faith and as such is an abuse of the Policy.
Dennis A. Foster
Sole Panelist
Date: October 12, 2007
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