WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Atlantic Technology Enterprises, Inc. v. Stelor Productions, LLC Case No. D2009-0197 1. The Parties
Complainant is Atlantic Technology Enterprises, Inc. of Newton, New Jersey, United States of America, represented by McCarter & English, LLP, of United States.
Respondent is Stelor Productions, LLC, of Montgomery Village, Maryland, United States of America, represented internally. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2009. On February 16, 2009, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2009, GoD, Inc. transmitted by e-mail to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2009. The Response was filed with the Center on March 11, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 17, 2009. 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 states that it “offers a wide variety of Internet and telecommunication solutions and merchant account services to businesses and consumers” and that one of its “signature products” is “a managed network solution” known as SAFETiNET, which Complainant states it has used as a trademark since at least 2004 and which it registered as an alternate trade name for itself in the State of New Jersey. (Evidence provided by Complainant shows that it filed for this name on March 21, 2007.) Complainant further states that it uses the domain name as part of its “primary URL for its website devoted to advertising and promoting the SAFETiNET products”. The Panel's review of the WhoIs database shows that the domain name was registered on July 3, 2004, and Complainant states that it has used this domain name in connection with its SAFETiNET products “since 2004”.
The Disputed Domain Name was registered on August 8, 2005.
Complainant states that “Respondent makes no affirmative use of the domain”, and Respondent states that it “concedes that at present the Disputed Domain Name resolves to an inactive website”. The Panel's review of the website at “www.” indicates that it is a monetized parking page that contains links relating, inter alia, to automobile window-tinting. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights because (a) Complainant has acquired secondary meaning in the SAFETiNET mark through “substantial promotional efforts” including USD25,000 on advertising and promotions, its website using the domain name and its participation in various trade shows and exhibitions, which have generated USD344,000 in sales and (b) the Disputed Domain Name “wholly incorporates the SAFETiNET mark, adding only the generic top-level domain”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is no evidence of the Respondent's 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”; and “Respondent has never been known either by the name “SAFETINET” or the domain name ”.
- The Disputed Domain Name was registered and is being used in bad faith because Respondent “had apparent knowledge of [Complainant's] SAFETiNET mark at the time of registration” because Complainant began using the mark in 2004 and because Respondent is a “sophisticated domainer” with a portfolio of more than 200 domain names; and “Respondent makes no affirmative use of the domain”. B. Respondent
Respondent contends, in relevant part, as follows:
- Complainant does not have rights in the mark SAFETiNET because the mark “is a generic name that consists of common words” and “Complainant has failed to provide compelling evidence to establish secondary meaning”.
- Respondent has rights or legitimate interests in the Disputed Domain Name because “Respondent has developed patent pending technology to ensure the child's safety on the internet” and “by registering the domain name only intended to participate in the community of educating parents and children on safety on the Internet and providing them the opportunity to avail themselves of the new technology that the Respondent has developed”.
- The Disputed Domain Name has not been registered and is not being used in bad faith because “Respondent has not attempted to sell the domain name to the Complainant, nor used the domain name as a means of creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or endorsement of the Respondent's business, products or service” and “Respondent has a genuine intention of using the domain name with the company's products and services”. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
“A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.” Uitgeverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575 (finding common-law trademark rights where “Complainant has provided evidence to the effect that he has been using the mark… in association with its business for a number of years prior to the Domain Name being registered”). To establish common-law trademark rights for purposes of the Policy, a Complainant can provide, among other things, press releases, newsletters and website printouts showing use of the relevant mark for a period of several years. Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7, and GB Investments, Inc. v. Donald Baker,WIPO Case No. D2007-1320 (finding common-law trademark rights based on “continuous use” of the mark for eight years, “extensive promotion” under the mark and Complainant's “widespread recognition”).
In this case, Complainant states that it has used the SAFETiNET trademark for approximately five years, that it obtained a state name registration for the mark nearly two years ago, and that it has spent USD 25,000 advertising and promoting the trademark through publications and trade shows. These statements are supported by a declaration signed by Complainant's president. Accordingly, for purposes of this dispute under the Policy the Panel is prepared to accept Complainant's argument that it has acquired rights in the SAFETiNET trademark.
Therefore, the remaining question under this element of the Policy is whether the Disputed Domain Name is identical or confusingly similar to the SAFETiNET trademark. In answering this question, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name (i.e., “safetinet”), as it is well-established that the top-level domain name (i.e., “.org”) should typically be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No.95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office's Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.') nor the TLD have any source-indicating significance”).
The second-level portion of the Disputed Domain Name, in this case “safetinet”, is clearly identical to the SAFETiNET trademark, so no further discussion is necessary. Accordingly, the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
In support of its assertions that it intends to use the Disputed Domain Name in connection with its “patent pending technology” to help parents protect children on the Internet, Respondent has provided as an exhibit a copy of an application filed pursuant to the Patent Cooperation Treaty, International Application No. PCT/US2006/022832. This application identifies the applicant as “Stelor Productions, LLC” and the filing date as June 13, 2006. The application claims, among other things, “[a] method for establishing a security code” and “[a] system for use in controlling access to a resource”. While an examination of the patentability of this method and system are beyond the scope of this decision, the Panel finds credible Respondent's assertion that this method and system may relate to a technology for helping parents protect children on the Internet, and the Panel has no basis on which to reject Respondent's statements that it intends to use the Disputed Domain Name in connection therewith. Accordingly, Respondent has provided evidence of “demonstrable preparations to use [the Disputed Domain Name] in connection with a bona fide offering of goods or services” that is, rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy.
Accordingly, Complainant has not demonstrated that Respondent lacks rights or legitimate interests in the Disputed Domain Name for purposes of the Policy. C. Registered and Used in Bad Faith
Where a complainant does not prove one or more of these elements, a panel is compelled to issue a decision denying the complaint, regardless of the complainant's ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc.,WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element, it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter,WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed above, that Complainant has failed to prove the second element of the Policy that is, paragraph 4(a)(ii) the Panel makes no findings with respect to the third element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Sole Panelist
Dated: March 31, 2009
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