7th Feb 2003

 

 

 

DECISION

Mytech Partners Inc. v. Jebs Corporation c/o Lisa Briggs

Claim Number: FA0212000135645

PARTIES

Complainant is Mytech Partners, Inc., Minneapolis, MN, USA (“Complainant”) represented by Lyf Wildenberg, of Mytech Partners, Inc. Respondent is Jebs Corporation c/o Lisa Briggs, Vancouver, BC, CANADA (“Respondent”) represented by Ari Goldberger, of ESQWire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mytech.com>, registered with Register.com, Inc.

PANEL

Each of the undersigned panelists 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 E. Sorkin, Karl V. Fink, and James A. Crary, Chair, served as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2002; the Forum received a hard copy of the Complaint on December 13, 2002.

On December 9, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <mytech.com> is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 December 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 2003 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 postmaster@mytech.com by e-mail. On January 3, 2003, an Extension of Time to Respond to Complaint was granted to Respondent, setting a deadline of January 16, 2003 by which Respondent could file a Response to the Complaint.

A timely Response was received and determined to be complete on January 16, 2003.

On January 28, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David E. Sorkin, Karl V. Fink, and James A. Crary, Chair as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant asserted that it had rights in MYTECH “Complainant has a Trade/Market that is inclusive to the word MYTECH in the computer and computer network consulting services”. It was asserted that Complainant demonstrated a bona fide offering of goods and services “regarding trademark”. It was asserted further that the Complainant was a commonly referred to and known as “Mytech”.

The Complainant maintained that Respondent was not currently using and had never used the domain name mytech.com. and that Respondent “has parked the domain for seventeen months”. Respondent had not demonstrated any preparations to use the domain and had made no bona fide offering of goods or services regarding the domain. Complainant asserted Respondent was not known by the domain name and did not have any non-commercial use of the domain. Finally, the Complainant asserted bad faith in that the Respondent had acquired the domain name specifically for the purpose of selling the domain to the Complainant. Transfer of the domain name was sought by the Complainant.

B. Respondent

The disputed domain name <mytech.com> was registered November 4, 1997 together with approximately 300 other domain names with the prefix name “my” in connection with a business formally known as MyInternet.com. Most of the business was sold in early 2000 but the Respondent intended to re-launch other parts of the business plan pending an improvement in the environment for fundraising such ventures.

Respondent’s domain name registration took place 3 years before Complainant claimed first-use of its trademark, it was almost 5 years prior to Complainant’s trademark registration of May 7, 2002. Since it was impossible for Respondent to have registered the disputed domain name in bad faith because there was no trademark or even use of the mark at the time Respondent registered the domain name, Complainant had abused these precedings and engaged in reverse domain name hijacking.

The Panel was asked to dismiss the complaint and to find reverse domain name hijacking since the Complainant had been instituted without a possible factual basis to establish bad faith or lack of a legitimate interest on the part of the Respondent.

Respondent had invested over $3.5 million dollars in the MyInternet venture. At one time, the business employed 25 people. MyInternet enabled users to perform various on-line management tasks from any computer connected to the Internet through a user-friendly interface. Other services were offered as well.

The Respondent registered more than 300 domain names related to various categories. Each of the names was preceded by the word “my”. In early 2000 part of the business was sold to NamesDirect.com.

The term MYTECH is a descriptive term composed of the singular possessive pronoun “my” and the common abbreviation for technology, “tech,” meaning my technology. A Google.com search of the descriptive term MYTECH revealed substantial third-party use.

The Respondent maintained that Complainant’s mark provided no enforceable rights under the Policy with respect to the disputed domain since the domain preceded the trademarks first use and registration by substantial periods of time and the complaint could be denied on that basis alone.

It was also asserted that MYTECH and MYTECH PARTNERS are not identical, that a non-distinctive mark could not be “dismantled in the way necessary to find identically or confusing similarity”.

It was noted that Respondent had legitimate interest in the disputed domain name. It had retained the domain despite the sale of its company. The mere intent to use the domain for a business plan even if that plan never gets off the ground is sufficient to establish Respondent’s legitimate interest. A finding of legitimate interest is supported in that Respondent invested over $3.5 million dollars and thousands of hours of time to the MyInternet.com business, which had commenced operations and had 25 employees.

It further was noted that Complainant’s unsolicited offer to purchase the disputed domain name for $5,000 constituted recognition of Respondent’s legitimate interests.

Regarding bad faith registration and use, Respondent asserted that Complainant cannot meet the burden of proving bad faith registration of the domain name because it was an antecedent to the trademark application. Since authorities supported the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy. Neither could the Complainant establish bad faith based on Respondent’s reply to Complainant’s unsolicited inquiry concerning purchase of the disputed domain name.

Finally, Respondent asserted reverse domain name hijacking. The Complainant initiated these precedings because it was unable to purchase the disputed domain name at the $5,000 price offered. The Complainant knew when it filed the complaint the Respondent had registered the disputed domain name before Complainant had ever filed for a trademark for MYTECH PARTNERS. This constituted abuse of the administrative process. Further, the Complainant had no plausible basis for the complaint considering the flimsy nature of the registration and since the term was generic in nature. It should have been apparent to the Complainant that it could not prove all of the elements required by the URDP Policy.

FINDINGS

1.      The domain name mytech.com was registered November 4, 1997.

2.      Complainant’s trademark MYTECH PARTNERS was registered May 5, 2002. The mark was first used in commerce October 8, 2000.

DISCUSSION

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.

It was the Panel’s conclusion that the Complainant must fail under the facts of this case. Respondent’s domain name registration predates Complainant’s use of the MYTECH PARTNERS mark by three years and it’s registration with the United States Patent and Trademark Office by five years. The Panel finds that the Complainant had no grounds to bring this claim under the URDP. That is because it is impossible for the Complainant to establish that Respondent registered the disputed domain name in bad faith when there was no trademark or even use of the trade name at the time Respondent registered it. See John Ode D/BA ODE and ODE-Optimum Digital Enterprises v Internship Ltd D2001-0074 (WIPO May 1, 2001). In that case the Panel stated:

There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith.

In this case the domain name was registered three years before the trademark even existed, and therefore it could not have been registered in bad faith under the UDRP.

The Panel dispensed with a discussion of identical and/or confusingly similar, and rights or legitimate interests elements since under the Policy, the complaint fails unless all three elements necessary to establish an abusive domain name registration are established.

Reverse Domain Name Hijacking

The Panel was asked to make a finding of reverse domain name hijacking under Rule 15(d). The Rules specifically put the burden on the Panel to determine whether the Complainant has tried to use the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. See Rodale, Inc. v. Cambridge, Case No. DBIZ2002-00153 (WIPO June 28, 2002).

In this case one Panelist, David Sorkin, would have found reverse domain name hijacking given what he consider to be Complainant’s bad faith effort to use the Policy since Complainant could not establish any plausible factual basis for relief under the Policy. The John Ode Case noted above on which Mr. Sorkin served as a panelist contains a list of cases where the Panels had made reverse domain name hijacking findings in cases where the domain name registration predated the existence of the trademark. See also Aspen Grove, Inc. v. Aspen Grove, No. D2001-0798 (WIPO Oct. 5, 2001).

The majority of the Panel felt however that in this case the finding was not justified. It is noted that the Complainant pursued these proceedings without the benefit of legal counsel. The complaint was a bare-bones affair that did not reflect a deep understanding of the Policy and Rules. While the Respondent asked for the relief, there was no evidence extraneous of the complaint itself to support a finding that Complainant acted intentionally to abuse these proceedings. The majority of the Panel was of the opinion that a finding under 15(d) of the Policy should be reserved for those cases where there is a clear showing of abuse. See Business Architecture Group, Inc. v. Reflex Publishing, FA 97051 (Nat. Arb. Forum June 5, 2001). The Panel wrote:

… where the complaint appears to have been drafted pro se and without a clear understanding trademark principles on its face, we find insufficient evidence to conclude that the Complainant brought this action in bad faith.

A majority of the Panel concluded that the complaint was not brought in bad faith.

DECISION

            The request to transfer the domain name to Complainant is denied.

 

 

 

David E. Sorkin, Karl V. Fink, and James A. Crary, Chair, Panelists
Dated: February 7, 2003