Artemis Management Systems, Inc. v. Artemis Research

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Artemis

Management Systems Inc. v. Web TV Networks, Inc. formerly known as Artemis Research

Case No.

D2001-0153

1. The Parties

1.1 The Complainant

is Artemis Management Systems Inc., a corporation organized and existing

under the laws of the State of California, having its principal place

of business at 6260 Lookout Road, Boulder, Colorado, United States of

America.

1.2 The Respondent

is Web TV Networks, Inc., formerly known as Artemis Research, a corporation

with an address at 1065 La Avenida St., Mountain View, California, United

States of America.

2. The Domain Name and

Registrar

The domain name at

issue is <artemis.com>, which domain name is registered with Network

Solutions, Inc. ("NSI"), a registrar based in Herndon, Virginia, United

States of America.

3. Procedural History

3.1 A Complaint

was submitted electronically to the WIPO Center on January 6, 2001, and

the signed original, together with four copies forwarded by express courier,

were received on January 31, 2001. An Acknowledgment of Receipt was sent

by the WIPO Center to the Complainant, dated February 1, 2001.

3.2 On February

5, 2001, a Request for Registrar Verification was transmitted to the registrar,

Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the

domain name at issue is registered with NSI; (2) confirm that the person

identified as the Respondent is the current registrant of the domain name;

(3) provide the full contact details (i.e., postal address(es), telephone

number(s), facsimile number(s), e-mail address(es)) available in the registrar’s

Whois database for the registrant of the disputed domain name, the technical

contact, the administrative contact and the billing contact; (4) confirm

that the Uniform Domain Name Dispute Resolution Policy (the "Policy")

is in effect; (5) indicate the current status of the domain name.

3.3 On February

6, 2001, NSI confirmed by reply e-mail that the domain name at issue is

registered with NSI, is currently in active status, and that the Respondent

is the current registrant of the name. The registrar also forwarded the

requested Whois details, and confirmed that the Policy is in effect.

3.4 The WIPO Center

determined that the Complaint satisfies the formal requirements of the

Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the

"Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy (the "Supplemental Rules"). The Panel has independently

determined and agrees with the assessment of the WIPO Center that the

Complaint is in formal compliance with the requirements of the Uniform

Domain Name Dispute Resolution Policy, adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999

(the "Policy"), the Uniform Rules, and the Supplemental Rules.

The required fees for a one-member Panel were paid on time and in the

required amount by the Complainant.

3.5 No formal

deficiencies having been recorded, on February 7, 2001, a Notification

of Complaint and Commencement of Administrative Proceeding (the "Commencement

Notification") was transmitted to the Respondent (with copies to

the Complainant, NSI, and ICANN), setting a deadline of February 26, 2001,

by which the Respondent could file a Response to the Complaint. The Commencement

Notification was transmitted to the Respondent by courier and by email

to the email addresses indicated in the Complaint. In any event, evidence

of proper notice is provided by the evidence in the record of the Respondent’s

participation in these proceedings.

3.6 A Response

was received electronically on February 27, 2001, and in hardcopy on February

28, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO

Center on February 28, 2001. Respondent requested a three-person panel

and enclosed the fees therefor in the required amount.

3.7 On April 3,

2001, the WIPO Center Sent a Notification of Panel Appointment, appointing

Dennis A Foster, Esq. and Professor Jessica Litman, who had previously

submitted Statements of Acceptance and Declarations of Impartiality and

Independence. On the same date, the WIPO Center forwarded a Presiding

Panelist Selection List to the parties, requesting that such list be returned

no later than April 9, 2001, with the candidates ranked in order

of preference.

3.8 On April 24,

2001, having received a Statement of Acceptance and Declaration of Impartiality

and Independence, the WIPO Center notified the parties that M. Scott Donahey

had been appointed as Presiding Panelist and that Panelist Selection was

now complete. The Notification stated that the Panel Decision was due

on May 8, 2001. The date for Panel Decision was later extended

to May 18, 2001.

4. Factual Background

4.1 Complainant

first registered the ARTEMIS mark with the United States Patent and Trademark

Office ("USPTO") in 1981 in connection with computer programs recorded

on magnetic storage media for assisting customers in project management.

The mark has subsequently been registered in twenty-eight other countries

by Complainant, who has used the mark in conjunction with its project

management software and consulting service, and has used the name ARTEMIS

beginning in 1976. Artemis is the name of the Greek goddess of the hunt

and of the moon, the Roman equivalent of which is the goddess Diana.

4.2 Complainant

has over 550,000 licensees for its software product worldwide. Complainant

advertises in numerous publications and tradeshows throughout the world,

which are specifically directed at project managers operating with an

annual budget in excess of $750,000.

4.3 Respondent

registered the domain name at issue on April 29, 1995.

4.4 At the time

that Respondent registered the domain name at issue, Respondent operated

under the name Artemis Research. In March 1995, Respondent first developed

the WebTV technology that allows users to display the Internet on a standard

television monitor. Respondent established a fanciful web site to which

the domain name at issue resolved, which web site was intended to amuse

and to mask the nature of Respondent's research effort.

4.5 On May 25,

1995, Respondent filed an application with the USPTO for registration

of the mark ARTEMIS in connection with computer software for use in the

field of entertainment, telecommunications, and communications, namely

for generating virtual reality environments and related products. That

application is still pending. Response, Annex 3.

4.6 Respondent

began to devote virtually all of its time to the WebTV Project, and in

June 1995 organized a corporation under the laws of the State of California

by the name of WebTV Networks, Inc. Despite the formation of this new

entity, Respondent continued to do business under the "Artemis Research"

name for some time thereafter.

4.7 Respondent

currently uses the domain name at issue not only to resolve to the fanciful

web site, which Respondent claims has historical significance to Respondent,

but also to support its internal email system.

4.8 On June 1,

1999, one of the principals of Respondent severed his connection with

Respondent. Under the terms of the separation agreement, that principal

is to receive all rights to the Artemis name and mark once Respondent

begins using the WebTV name exclusively. The principal's counsel has taken

over the prosecution of the ARTEMIS trademark application, and the principal

has incorporated a new business, Artemis Ventures, Inc., for the purpose

of carrying on his business activities.

4.9 Complainant

alleges that in 1997 and again in 2000, Complainant offered to purchase

the domain name at issue from Respondent and that Respondent rejected

each offer. Respondent does not specifically recall any particular offers

from Complainant, but in the more than six years that Respondent has owned

the domain name at issue, Respondent has received numerous offers from

third parties who wished to acquire the domain name at issue, and Respondent

has rejected all of them.

5. Parties’ Contentions

5.1 Complainant

contends that Respondent has registered a domain name which is identical

to the trademark registered and used by Complainant, that Respondent has

no rights or legitimate interests in respect of the domain name at issue,

in that Respondent no longer conducts business under the name and in that

Respondent's web site is out of date, and that Respondent has registered

and is using the domain name at issue in bad faith, because Respondent's

web site is out of date and the domain name at issue is not being used

in a bona fide manner.

5.2 Respondent

apparently admits that the domain name at issue is identical to marks

in which Complainant has rights (see, e.g., Response, ¶ 20), but

Respondent contends that it has rights and legitimate interests in respect

of the domain name at issue, since it registered the domain name in order

to promote the business of Artemis Research, that it has an application

for registration of the ARTEMIS mark pending, which has been pending since

1995, and that Respondent is making a bona fide use of the domain name

at issue to preserve a part of its corporate history in the form of the

initial web site and as the foundation for its internal email system.

Finally, Respondent denies that it registered the domain name in bad faith,

since at the time of the registration Respondent was unaware of Complainant's

existence, that it registered the domain name in conjunction with its

business name, and that it promptly applied for a trademark on the name

in question.

6. Discussion and

Findings

Paragraph 15(a) of

the Rules instructs the Panel as to the principles the Panel is to use in

determining the dispute: "A Panel shall 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."

Since both the Complainant

and Respondent are domiciled in the United States, and since United States’

courts have recent experience with similar disputes, to the extent that

it would assist the Panel in determining whether the Complainant has met

its burden as established by Paragraph 4(a) of the Policy, the Panel shall

look to rules and principles of law set out in decisions of the courts of

the United States.

Paragraph 4(a) of the

Policy directs that the Complainant must prove each of the following:

(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; and,

(2) that the

Respondent has no rights or legitimate interests in respect of the

domain name; and,

(3) that the

domain name has been registered and is being used in bad faith.

We must first determine

whether the domain name at issue is identical or confusingly similar to a mark

in which Complainant has rights. There is no dispute that Complainant has rights

in the ARTEMIS mark. Respondent apparently does not contest and the Panel finds

that the domain name at issue is identical to the mark in which Complainant

has rights.

Complainant has alleged

that Respondent has no rights or legitimate interests in respect of the

domain name at issue. Paragraph 4(c) of the Policy sets out ways in which

a Respondent may demonstrate rights or legitimate interests in respect of

the domain name at issue. Subparagraph (i) of that Paragraph provides that

such rights can be demonstrated where "before any notice to [Respondent]

of the dispute, [Respondent has] use[d], or demonstrabl[y] prepar[ed] to

use, the domain name in connection with a bona fide offering of goods or

services." The Panel finds that Respondent has established rights and legitimate

interests in respect of the domain name at issue under this subparagraph

for several reasons.

First, nowhere does

Complainant allege that it notified Respondent of a dispute at any time

prior to the filing of the Complaint in this matter. Complainant's only

allegations of pre-dispute contacts with Respondent are as follows:

"There have been

two attempts to contact the Respondent regarding the acquisition of the

subject domain name annotated herein. The first contact was in 1997 whereby

Artemis contacted Artemis Research regarding the possibility of purchasing

the subject domain name. At that time Artemis was told that the name was

not for sale and that several other entities were interested in purchasing

the rights to the domain name. The second contact was late in 2000 where

again Artemis inquired regarding the acquisition of the subject domain

name. Their response was that the domain name was not for sale."

Complainant does not

allege that it notified Respondent of its trademark rights or asserted that

Respondent's use of the domain name was prohibited by law or by the Policy.

Accordingly, Respondent received no notice of the dispute until it received

a copy of the Complaint in the instant matter.

Second, the use of

the domain name in conjunction with the business of Artemis Research, the

application and prosecution of the registration of the trademark ARTEMIS,

and the contemplated use and preparations to use the domain name in conjunction

with the business of Artemis Ventures, Inc. are bona fide uses and preparations

to use which predate the notice of the dispute. The domain name at issue

uses a name of a well-known Greek goddess. Even had Respondent received

actual notice prior to the registration of the name, Respondent would still

have been within its rights to register the domain name at issue. CRS

Technology Corp. v. CondeNet Inc., ICANN Case No. FA93547 (concierge.com).

Third, the fact that the

domain name at issue corresponds to Artemis Research and Artemis Ventures, Inc.,

names under which Respondent operated or under which Respondent's principal

is preparing to operate, also qualify as rights and legitimate interests under

paragraph 4(c)(ii) of the Policy. Gateway, Inc. v. Pixelera.com, Inc.,

ICANN Case No. D2000-0109; Loblaws,

Inc. v. Presidentchoice.inc/presidentchoice.com, ICANN Case No. AF-170a,

b, & c.

Finally, Respondent's use

of the common term "artemis" as a domain name in conjunction with its email

is evidence of rights and legitimate interests under paragraph 4(c)(i) of the

Policy. Zero International Holding GmbH & Co. Kommanditgesellschaft v.

Beyonet Services and Stephen Urich, ICANN Case

No. D2000-0161 (where <zero.com> was used for email services).

Since the Panel finds

that Respondent has rights or legitimate interests in respect of the domain

name at issue, the Panel does not need to reach the issue of bad faith registration

and use.

The Panel does not

find that Complainant is guilty of bad faith reverse domain name hijacking.

The Complaint in this proceeding was not frivolous and, in the Panel's view,

was not filed in an attempt to gain possession of a domain name to which

the Complainant had no colorable claim.

7. Decision

For all of the foregoing

reasons, the Panel decides that the domain name registered by Respondent is

identical to the mark in which the Complainant has rights, but that the Respondent

has rights to or legitimate interests in respect of the domain name at issue.

Accordingly, the relief requested in the Complaint is denied.

M. Scott

Donahey

Presiding Panelist

Dennis A.

Foster

Panelist

Jessica

Litman

Panelist

Dated: May

18, 2001