4th Mar 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PROM Software, Inc. v. Reflex Publishing, Inc.
Case No. D2001-1154
1. The Parties
Complainant is PROM Software, Inc., a Delaware corporation with a principal place of business in Burlington, Vermont, United States of America ("Complainant").
Respondent is Reflex Publishing, Inc. of Tampa, Florida, United States of America ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <prom.com>.
The registrar is Tucows Inc. ("Tucows"), 96 Mowat Avenue, Toronto, Ontario, Canada.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint via email on September 20, 2001, and in hard copy form on September 25, 2001. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The formal date of commencement of this Administrative Proceeding is October 1, 2001.
On September 25, 2001, Tucows confirmed by e-mail to the Center that the domain name <prom.com> is registered with Tucows and that the Respondent is the current Registrant of the domain name.
Following an extension of time to respond granted by the Center, the Center received the Response via email on October 31, 2001, and in hard copy form on November 1, 2001. Respondent requested a three-member panel. All required payments were made to the Center.
On January 21, 2002, the Center notified the parties of the appointment of Panel members Sally M. Abel (Presiding Panelist), Alan L. Limbury and a third panel member who later had to withdraw due to a scheduling conflict; subsequently, and prior to any deliberations by the Panel, Neil Smith was appointed to the Panel. The Panel’s opinion initially was due to the Center by February 18, 2002. On February 14, 2002, the Panel received an extension of that date to March 4, 2002.
4. Factual Background
Complainant PROM Software, Inc., formerly P*ROM Software Inc., owns U.S. Trademark Registration No. 2,420,964, filed August 24, 1999 and issued January 16, 2001, for PROM used in connection with "computer software that performs functions, namely mathematical and measuring calculations in the financial services and aviation industries," claiming use since 1975. Complainant has a similar trademark application pending in Canada, and claims to have used PROM as a trademark worldwide since 1975 (Complaint Paragraphs 2,4), although the Canadian application incorporates a use date in Canada of "at least as early as 1987" (Complaint, Exhibit E). Complainant operates a website at <www.promsoft.com>.
Respondent, Reflex Publishing Inc., a self-described "Internet publishing firm", operates several informational websites focused on sports, entertainment and travel, including <baseball.com>, <motels.com>, <tampa.com>, <florida.com> and <locate.com>. Respondent also operates a website at <www.apply.com> where Respondent offers domain name registration services. Additionally, Respondent has recorded a fictitious business name – Distinctive Domains – with the Florida Secretary of State (Complaint, Exhibit O). Respondent owns many domain names, the vast majority of which appear to include ordinary English language words, such as <extrovert.com>, <gambler.com>, <killer.com>, <pudding.com> and <theparty.com>. Respondent apparently has sold at least two domain names in the past, including <netpackets.com> and <contrast.com>, both transferred to Contrast Technologies, Inc. (Complaint, Paragraph 16 and Exhibit R).
On September 9, 1998, before Complainant filed its U.S. trademark application, Respondent registered the <prom.com> domain name. The <prom.com> site currently contains what appear to be links to other websites containing content of interest to teenagers, as well as several moderated chat rooms on teen topics. (Response, Exhibit 8). According to Respondent, the site has been operating since February 2001. At some time prior to February 2001, Respondent used the domain name to point to a school prom-related website, <4proms.com>, operated by a third party.
On or around July 20, 1999, William D. Symmes, founder and President of Complainant, on Complainant’s behalf, sent an email to Eric Grant, President of Respondent, which reads, in full (Complaint, Exhibit H):
"We have noticed that you have <prom.com> registered but are not using it.
We are interested in acquiring the domain should you be interested in selling it for a reasonable sum. We are a small software company and "PROM" has become our nickname in our industry.
Please advise if you are interested. Thank you."
The same day, Mr. Grant sent the following response via email (Complaint, Exhibit H):
"Sorry, we’re not interested in selling. We are working on a site."
On or about February 29, 2000, Mr. Symmes again contacted Respondent, via email, as follows (Complaint, Exhibit J):
"We are interested in acquiring the above domain name <prom.com> for our company.
We have approached you previously, but have always been told that the domain was not for sale. I notice today that the domain is apparently being forwarded to another company, which appears to be unrelated to Reflex Publishing, Inc.
We have used the name PROM for 25 years, and have a US Federal Trademark Serial Number 75783304 for the name.
Under the new ICANN Rules, we feel we would prevail in an arbitration procedure concerning this domain, but would rather work something reasonable out with you."
Again, Mr. Grant responded on behalf of Respondent, as follows (Complaint, Exhibit K):
"I’m sorry but the domain is not for sale.
Yes, we have established an affiliation with <4anything.com> to promote their PROM site, and eventually will be developing a similar site ourselves. Neither of these uses infringes your trademark, which is for ‘Software for computational uses in the financial service industry and in aviation.’"
5. Parties’ Contentions
The Complainant contends that the domain name <prom.com> is confusingly similar to Complainant’s PROM trademark, a mark it has used for more than 25 years. Complainant describes its PROM mark as a "fanciful play off the computer acronym EPROM, which stands for Erasable Programmable Read Only Memory." (Complaint, p.9). According to Complainant, the mark is "fanciful" because, "Programmable Read Only Memory chips (i.e., without erasability) do not truly exist." (Complaint, p.9). Because both companies do business on the Internet – Respondent through its <apply.com> domain name registration site that can be accessed by linking from the <prom.com> site –the domain name <prom.com> is confusingly similar to Complainant’s PROM mark.
Complainant further alleges that Respondent has no right or legitimate interest in the <prom.com> domain name because Respondent did not use the domain name before Complainant’s first contact, admitted at the time of that contact "it was only working on a site," has never been known as "PROM", and has only minimal content on the site which is a subterfuge "to circumvent bad faith charges and to veil the equally obvious fact that Respondent operates a warehouse for holding domain names for sale." (Complaint, p.11).
Complainant alleges that Respondent’s registration of at least 200 domain names, and involvement in two previous ICANN actions, in which Respondentprevailed, generally constitutes bad faith under the Policy.
Respondent concedes that Complainant "holds a trademark for PROM" which refers to an acronym meaning something other than "annual high school formal dance," the more commonly understood definition of "prom." (Response, p.1). Complainant cannot claim exclusive rights in this ordinary English language word, and Respondent registered and is using the domain in a good faith effort to operate "a website related to high school proms." (Response, p.1).
Respondent contends there is no evidence of bad faith under the Policy. Respondent had no knowledge of Complainant or Complainant’s use of PROM when Respondent obtained the domain name; Respondent obtained the domain name before Complainant filed any of its trademark applications. Respondent never offered the domain name <prom.com> for sale, to Complainant, or to anyone else. According to Respondent, "registration of common word domain names – even for the purpose of reselling them" is not bad faith but actually demonstrates a legitimate interest in those domain names. (Response, p.3).
Respondent contends that in pursuing this action, Complainant is engaged in reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following to justify transfer of a domain name:
(1) that 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) that the respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and used in bad faith.
Complainant has not met its burden of proof.
1) Similarity of the Mark and Domain Name
Complainant owns a U.S. trademark registration of PROM, claiming a date of first use of 1975. Respondent does not challenge Complainant’s rights in PROM as a mark, and concedes that Complainant’s mark and the domain name are identical. Under these circumstances, the Panel concludes that Complainant has established that the domain name is identical to a trademark in which Complainant has rights.
The Panel notes, however, that not only is "prom" a generic English language word for a high school dance, it is even a generic term in the computer technology industry, the industry in which Complainant operates. PROM is an acronym for the generic "Programmable Read-Only Memory", defined in an on-line computing dictionary as "a kind of ROM [a type of storage device which is manufactured with fixed contents] which can be written using a PROM programmer." (Free On-Line Dictionary of Computing; <www.foldoc.com>; http://foldoc.doc.ic.ac.uk/foldoc/ foldoc.cgi?query=prom&action=Search>).
The Panel rejects Complainant’s contention that its use of PROM is somehow "fanciful" or "suggestive" as those terms are understood in trademark law, and further notes that Complainant’s use of all capital letters to highlight the PROM portion of its company name -- PROM Software, Inc. – simply underscores the derivation of the PROM portion of the name from the generic acronym.
2) Legitimacy of Respondent’s Interest
Not only has Complainant failed to meet its burden of demonstrating that Respondent has no right or legitimate interest in the domain name, Complainant actually has established the apparent legitimacy of Respondent’s interest. The email exchange between the principals of the two companies, initiated by Complainant, unequivocally shows both that Complainant was well aware that it had no entitlement to the domain name, and that Respondent quite politely rejected Complainant’s inquiries to purchase the domain name, responding that the domain name was not for sale and that Respondent was working on putting up a site.
Complainant’s argument that Respondent’s failure to use the domain until some time after Complainant’s initial inquiry, and Respondent’s current use of the site to post superficial content, manifest a lack of legitimate interest, is misplaced. A domain name holder is under no obligation to immediately begin operating a website upon registering the domain name. There is content on Respondent’s website that would be likely to appeal to Respondent’s purported target audience: teenagers. While the Panel notes that the site does not appear to be devoted to high school dances, the fact remains that the content is geared toward teenagers, an audience for whom the word "prom" likely would signify a school dance.
3) Bad Faith Registration and Use
Complainant’s argument as to bad faith is specious. The entire argument hinges on Respondent’s running a domain name registration service, and possibly also selling domain names containing common words, while, at the same time, it is uncontroverted that Respondent never offered to sell the disputed name to anyone, and even declined to do so both times Complainant contacted Respondent wanting to purchase the domain name.
It is not bad faith to run a domain name registration service. Nor is it bad faith, in and of itself, to register multiple domain names containing generic terms, or to transfer at least two of those domain names (<contrast.com> and <netpackets.com>) to another company. Finally, it simply cannot be bad faith to be the prevailing respondent in two prior ICANN proceedings. Complainant’s effort to suggest that Respondent’s victory in those cases – involving the domain names <bag.com> and <postoffice.com> – establishes Respondent’s bad faith registration and use in this case, is incredible.
7. Reverse Domain Name Hijacking
Respondent has asked that the Panel find that Complainant has engaged in reverse domain name hijacking in pursuing this action. While, the Panel would be reticent to find reverse domain name hijacking in the ordinary case, the Panel concludes that this is notthe ordinary case.
Complainant’s current position – that it is entitled to a transfer of the domain name from Respondent – is belied by Complainant’s initial inquiry to Respondent as to whether the domain name might be available for sale. Complainant has known from the beginning that its rights in PROM are not exclusive. PROM is generic, both for a school dance, the most common meaning and the meaning relevant to Respondent’s registration and use, and for identifying programmable, non-volatile semiconductor memories. Complainant has confirmed what appears to be Respondent’s legitimate interest in the domain name. The record is devoid of any evidence of bad faith on Respondent’s part.
Complainant accuses Respondent of "thumb[ing] its nose at the Dispute Resolution Procedure." (Complaint, p. 14). To the contrary, if there is any finger pointing to be done, it points the other way. The Panel is reminded of the old adage, "Those who live in glass houses shouldn’t throw stones." Complainant’s knowingly flimsy claim not only wholly fails to meet the threshold showing for transfer of the domain name at issue, but also constitutes reverse domain name hijacking.
Complainant failed to meet its burden of proof with respect to the second and third elements of Paragraph 4(a) of the Policy. Further, Complainant essentially presented no colorable evidence or argument to suggest that Respondent had no right or legitimate interest in the <prom.com> domain name or that Respondent had acted in bad faith. Under these circumstances, detailed above, the Panel finds attempted reverse domain name hijacking, and, pursuant to Paragraph 15(e) of the Rules, declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Sally M. Abel
Alan L. Limbury
Dated: March 4, 2002