24th Oct 2006
NATIONAL ARBITRATION FORUM
Expert Computers Inc. v. Name Delegation c/o Domain Administrator
Claim Number: FA0609000787937
Complainant is Expert Computers Inc. (“Complainant”), represented by Ashley A Green, 118 West College Street, Griffin, GA 30224. Respondent is Name Delegation c/o Domain Administrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expertcomputers.com>, registered with Nameview, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn (Chairperson), Hon. Tyrus R. Atkinson, Jr., Esq. and Steven L. Schwartz as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2006.
On September 6, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <expertcomputers.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 28, 2006
A timely Additional Submission was received from Complainant and deemed to be complete on October 3, 2006.
A timely Additional Submission was received from Respondent and deemed to be complete on October 5, 2006.
On October 10, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn (Chairperson), Hon. Tyrus R. Atkinson, Jr., Esq. and Steven L. Schwartz as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
[a.] Complainant owns a federal trademark registration for EXPERT COMPUTERS & DESIGN which registration certificate recites a first use date of January 1, 2002 and a filing date of November 30, 2004.
[b.] Respondent’s registered domain name <expertcomputers.com> is confusingly similar to Complainant’s EXPERT COMPUTERS & DESIGN trademark.
[c.] Respondent has no rights or legitimate interest in the <expertcomputers.com> domain name.
[d.] Respondent has registered and is using the <expertcomputers.com> domain name in bad faith.
[a.] Respondent registered the domain name <expertcomputers.com> on May 4, 2001.
[b.] Respondent registered the domain name <expertcomputers.com> before Complainant started using its trademark EXPERT COMPUTERS & DESIGN and before Complainant filed a trademark application for this mark. Therefore, Complainant has no rights to <expertcomputers.com>.
C. Additional Submissions
Complainant filed an additional submission which has been reviewed, but which did not present facts or legal arguments which have influenced this Panel’s decision.
In Respondent’s Additional Submission, Respondent concedes that it did not begin use of its mark or file its application until after the disputed domain was registered.
Complainant owns trademark registration number 3,115,244 for EXPERT COMPUTERS & DESIGN, whose registration certificate recites a first use date of January 1, 2002, which was filed on November 30, 2004.
Respondent registered the domain name <expertcomputers.com> on May 1, 2001, which is prior to Complainant’s first use date and over three years prior to Complainant’s filing of its application.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar to a Mark in Which Complainants Have Rights Identical and/or Confusingly Similar
Paragraph 4(a)(1) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s marks. This provision necessarily implies that Complainant’s rights predate the registration of Registrant’s domain name. Intermark Media, Inc. v. Wang Logic Corp., FA0212000139660 (NAF Feb. 19, 2003). Respondent registered the domain name <expertcomputers.com> on May 1, 2001, which is prior to Complainant’s first use date of its trademark and was three years prior to Complainant’s filing of its application. As Complainant has not shown that its rights pre-date Registrant’s domain name, Complainant has not satisfied paragraph 4(a)(1) of the Policy.
Because the Panel has determined that Complainant has not satisfied this requirement of Policy § 4(a)(1), there is no need to determine whether Respondent has rights or legitimate interests in the domain name or whether Respondent registered or used the domain name in bad faith. Nevertheless, it should be noted that since Respondent’s domain registration predates Complainant’s rights for the mark, Respondent could not have registered the disputed domain in bad faith.
Reverse Domain Name Hijacking
Complainant is a legitimate trademark owner who was attempting to improperly apply the Policy to a domain name which pre-dates its trademark rights.
While this Panel notes that the filing of this Complaint and of the Additional Submission were ill-advised, this Panel cannot find, on the record before it, that the Complaint was filed in bad faith with the knowledge that it could not prove the requisite elements of the Policy. See, Netro Corporation v. James Koustas, FA0204000109723 (NAF June 12, 2002). (“This is a close call, but the Panel has determined not to find that Complainant has attempted a Reverse Domain Name Hijacking. True, the case was very weak and probably should not have been filed, but the facts do not justify a finding under Rule 15(c)”). Therefore, this Panel does not find Reverse Domain Name Hijacking based upon the evidence and pleadings submitted.
As Complainant has failed to establish the requirements of Policy § 4(a)(1), Complainant’s requested relief is hereby DENIED.
DAVID A. EINHORN, PANELIST (CHAIRPERSON)
HON. TYRUS R. ATKINSON, JR., ESQ. PANELIST
Steven L. Schwartz, PANELIST
Dated: October 24, 2006