17th Oct 2007
National Arbitration Forum
SPB Software House v. SPB Online Services, Ltd.
Claim Number: FA0708001067638
Complainant is SPB Software House (“Complainant”), represented by Enrico Schaefer, 810 Cottageview Drive, Unit G-20, Traverse City, MI 49684.Respondent is SPB Online Services, Ltd. (“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 <spb.com> registered with SignatureDomains.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Bruce E. Meyerson (Ret.), Hon. Timothy O’Leary (Ret.) and Prof. David Sorkin.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 23, 2007.
On August 23, 2007, SignatureDomains confirmed by e-mail to the National Arbitration Forum that the <spb.com> domain name is registered with SignatureDomains and that the Respondent is the current registrant of the name.SignatureDomains has verified that Respondent is bound by the SignatureDomains 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 August 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 13, 2007 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 email@example.com by e-mail.
On September 5, 2007, Respondent requested additional time to file a timely Response to the Complaint. On September 6, 2007, the National Arbitration Forum granted Respondent’s request, extending the time by which Respondent could file a timely Response to September 24, 2007.
A timely Response was received and determined to be complete on September 24, 2007.
Both Complainant and Respondent timely submitted Additional Submissions in accordance with Supplemental Rule 7.
On October 4, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Bruce E. Meyerson (Ret.), Hon. Timothy O’Leary (Ret.) and Prof. David Sorkin as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS (Including Additional Submissions)
Complainant describes itself as an “internationally known software developer that creates software products for smartphones and Microsoft Windows Mobile devices.”Complainant first began using the SPB mark on January 1, 2001 and thereafter submitted the trade name SPB to the United States Patent and Trademark Office (the “USPTO”) in April 2005; the mark was registered with the USPTO on February 20, 2007.
Complainant contends that Respondent is a “well-known cybersquatter” and through its use of the domain name has profited from the goodwill associated with Complainant’s mark.According to Complainant, Respondent participates in an advertising program run by <information.com>. Complainant asserts that this program is “direct navigation,” or “type-in navigation,” which is a process of navigating to a website through a web browser’s address as opposed to a search engine. Complainant claims that Internet users mistakenly are directed to Respondent’s site when searching for Complainant’s site when they type <spb.com> into their web browser’s address bar.At Respondent’s site there are search terms that direct visitors to links with companies that are in competition with Complainant.
Complainant contends that under the foregoing circumstances Respondent’s actions have violated the Policy.
Respondent denies that it is the same entity that has been the subject of other proceedings under the Policy. Respondent asserts that it registered the domain name on June 24, 2001 after it was deleted by the Registrar when the prior owner failed to renew it.Respondent chose to acquire the domain name because “it was a short easy-to-remember domain name.”Respondent denies that it had any knowledge of Complainant or its mark at the time it registered the domain name.
Respondent states that Complainant has always operated its business as Spb Software House, not as “SPB standing alone.”Respondent claims that “SPB, standing alone, is the abbreviation of a city”—Saint Petersburg.According to Respondent, Complainant has not established that it has “rights” to the 3-letter combination of “SPB” between March 2001, when Complainant first began using the mark, and June 2001, when Respondent registered the domain name.
Respondent’s domain name was registered on June 24, 2001.Complainant began using the SPB mark in March 2001.The record indicates that Respondent was unaware of Complainant’s mark at the time the domain name was registered.Further, the record does not contain facts which would establish that the SPB mark had acquired secondary meaning as of June 2001.Complainant did not file its trademark application until April 2005.
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.
Complainant Has Not Established That Respondent Has Acted in Bad Faith
The record indicates that Complainant’s rights in the SPB mark do not date to when Respondent registered the <spb.com> domain name in June 2001.Complainant only began using the mark in commerce three months earlier and the record does not establish that the mark acquired secondary meaning as of that time.Moreover, the record indicates that Respondent was unaware of Complainant’s mark at the time Respondent registered the domain name.Furthermore, Complainant did not file its trademark application until April 2005, four years after the domain name was registered.
When a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith under Policy ¶ 4(a)(iii) because the registrant could not have contemplated the complainant’s non-existent right.E.g., John Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001).Although bad faith can be found if the respondent is clearly aware of the complainant’s mark, no evidence of such knowledge exists in this case.
Because the Panel has found that Complainant has not established that Respondent acted in bad faith in its registration of the domain name, the Panel declines to analyze the other two elements of the Policy.Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Having failed to establish at least one of the required elements under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Bruce E. Meyerson (Ret.), Hon. Timothy O’Leary (Ret.)
and Prof. David Sorkin, Panelists
Dated: October 17, 2007
National Arbitration Forum