The Complainant is TCR Business Systems, Inc. of Dallas, Texas, United States of America, represented by Ulmer & Berne LLP, United States of America.
The Respondent is Rod Smith of Denison, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2013, the Registrar 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” 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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2013. The Response was filed with the Center on February 19, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on February 28, 2013. 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 provides point of service (POS) systems and equipment to the hospitality and retail industry. The Complainant asserts trademark rights in “Texas Cash”. The Respondent, who at one time appears to have been employed in some capacity by the Complainant, registered the disputed domain name on January 13, 2000. The disputed domain name at present resolves to the Complainant’s TCR Business Systems website. This case involves disputes, inter alia, whether the Respondent registered the disputed domain name on behalf of the Complainant, and whether an agreement entered into between them on October 14, 2011 requires the Respondent to transfer the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant maintains that is has used TEXAS CASH as a trademark long before the Respondent registered the disputed domain name, which the Complainant asserts is confusingly similar if not identical to its trademark. According to the Complainant, the Respondent registered the disputed domain name in the course of his employment with the Complainant and at the Complainant’s direction. The Complainant avers that it either paid directly or reimbursed the Respondent for the registration fees, and explains that the disputed domain name is used with the Complainant’s primarily marketing website at “www.”. The Complainant submits that it has sole control of the website’s content.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because it was registered in the course of the Respondent’s employment with and at the direction of the Complainant, and the Respondent was paid or reimbursed for the registration fees. The Complainant explains that at no time was the Respondent authorized to use or claim the disputed domain name as his personal property, and that the Complainant has demanded the transfer of the disputed domain name, but that the Respondent has refused. The Complainant submits that the Respondent has not been commonly known by the disputed domain name, that no evidence exists that the Respondent is using or preparing to use the disputed domain name in connection with an bona fide offering of goods or services, and that the Complainant owns and operates the website to which the disputed domain name resolves.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent is persisting in the unlawful retention of the disputed domain name intending to sell, rent or otherwise transfer the domain name to the Complainant, or to a competitor of the Complainant, for valuable consideration to which the Respondent is not entitled. According to the Complainant, the Respondent also is seeking to prevent the Complainant from reflecting its mark in a corresponding domain name. B. Respondent
The Respondent disputes the Complainant’s claim that the disputed domain name was registered for and at the direction of the Complainant, asserting that the Complainant has submitted nothing to substantiate this claim. Similarly, the Respondent observes that the Complainant has provided no evidence that it reimbursed the Respondent for registration fees. To the contrary, the Respondent submits that the disputed domain name has been licensed to the Complainant, and that the fees paid to the Respondent are licensing fees. The Respondent submits an invoice that he explains reflects the licensing of the disputed domain name to the Complainant for a two year period, at USD 15.00 per year, ending on January 14, 2013.
The Respondent submits a copy of the parties’ October 14, 2011, agreement, which the Respondent contends demonstrates that he agreed only to transfer the domain name , and not the disputed domain name. The Respondent dismisses the Complainant’s assertion that he is not using the disputed domain name in connection with an offering of goods or services as “irrelevant” because of his licensing of the domain name to the Complainant, and he avers he cannot be using the disputed domain name to divert customers from the Complainant because the domain name resolves to the Complainant’s website. The Respondent further submits that as the lawful owner of the disputed domain name he is entitled to sell the domain name to anyone he wishes after the license to the Complainant expires. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in “Texas Cash”. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. The Complainant alleges that it used “Texas Cash” as a mark long before the Respondent registered the disputed domain name.
After careful consideration of the facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating trademark or service mark rights in “Texas Cash”. Although the disputed domain name resolves to the Complainant’s website, nowhere on the Complainant’s website is “Texas Cash” used as a source indicator for the Complainant’s products and services. The Complainant’s website is entitled “TCR Business Systems”, and it is this symbol that appears consistently to be used by the Complainant on its website to identify the products and services it provides.
Insofar as the Panel can determine based on the record before it, the words “Texas Cash” appear only as part of a copyright legend “Texas Cash Register © 2005”, and nowhere else on the Complainant’s website. Nor has the Complainant otherwise submitted evidence of the use of “Texas Cash” as a mark. As such, for purposes of the present Policy proceeding, the Panel concludes that the Complainant has failed to demonstrate use of “Texas Cash” as a distinctive or exclusive identifier of its products or services.
Accordingly, the Panel concludes that the Complainant has not satisfied its burden under Paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
In view of the Panel’s determination above under paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy. While the Panel accordingly expresses no opinion as the Respondent’s asserted rights or legitimate interests in the disputed domain name, the Panel notes that this dispute as framed in the parties’ submissions centers on (1) whether the Respondent was acting on behalf of the Complainant in registering the disputed domain name, and (2) whether the October 14, 2011 agreement between the parties requires the Respondent to transfer the disputed domain name to the Complainant. In the circumstances of this case, neither of these disputes in the Panel’s view is appropriate for determination under the limited scope of the Policy. Disputes centering on the Respondent’s contractual or legal right to retain the disputed domain name are more properly decided by traditional means. D. Registered and Used in Bad Faith
In view of the Panel’s determination above under paragraph 4(a)(i) of the Policy, it is also unnecessary for the Panel to address issues of bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. The Panel observes, however, that the Policy by its own terms is not applicable to any and all disputes involving domain names. Panels must decide cases based on the limited scope of the Policy, and the jurisdiction of this Panel necessarily is limited to cases of abusive domain name registration in which the registrant is seeking to profit from and exploit the trademark of another, also known as “cybersquatting”. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The Panel subscribes to the view that paragraph 4(a)(iii) of the Policy requires proof that the Respondent registered the disputed domain name in bad faith and is using the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Consequently, the issue of bad faith registration generally is to be determined with reference to the time the Respondent took possession of the disputed domain name. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062. The Panel notes it is undisputed in the record that the Respondent registered the disputed domain name in January 2000. This Panel, in accord with other UDRP panels, generally has declined to apply the doctrine of laches in proceedings under the Policy. The Panel nonetheless recognizes that lengthy delays in seeking legal or administrative remedies can have the effect of eroding the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent’s alleged bad faith in registering and using a domain name. See, e.g., Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. 7. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: March 14, 2013
Full & Egal Universal Law Academy