Paging Network Inc. v. Network Installation Computer Services

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Paging Network Inc. v. Network Installation Computer Services,

Inc.

WIPO Case No. D2001-0543

1. The Parties

Complainant is Paging Network, Inc. (Paging), a Delaware corporation with its

principal place of business in Westboro, Massachusetts, U.S.A.

Respondent is Network Installation Computer Services, Inc. (NICS), a corporation

with an address c/o Scott Moulton, NIC Services, 208 Carmichael Road, Woodstock,

Georgia 30188, U.S.A.

2. Domain Name and Registrar

The domain names in issue are:

<pagenetmessage.com>, and

<pagenetmessaging.com>.

The registrar is Network Solutions, Inc. (NSI).

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Paging’s Complaint

via email on April 13, 2001, and in hard copy on April 18, 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). Paging made

the required payment to the Center. The formal date of the commencement of this

administrative proceeding is April 23, 2001.

On April 18, 2001, the Center transmitted via email to NSI a request for registrar

verification in connection with this case. On April 19, 2001, NSI transmitted

via email to the Center NSI’s confirmation that (1) NICS is the registrant of

the domain names in issue, (2) the Policy applies to the domain names, and (3)

the domain name registrations are in "active" status.

On April 23, 2001, the Center transmitted to NICS Notification of Complaint

and Commencement of the Administrative Proceeding, together with a copy of the

Complaint, via post/courier and via email. The Center advised, inter alia, that

the response was due by May 12, 2001, and pointed out the response should be

in accordance with specified rules.

The Center received NICS’s response via email on May 11, 2001, and in hard

copy on May 21, 2001.

On May 22, 2001, the Center advised the parties via email of the appointment

of David W. Plant as sole Panelist, and that the decision was due June 5, 2001.

4. Factual Background; Parties’ Contentions

a. The Trademark

The Complaint is based on the mark PAGENET.

Paging, who refers to itself as PageNet in the Complaint, avers that it is

"a leading two-way Internet messaging and mobile information company,"

and since "as early as 1981, ... has been in the business of providing

paging and mobile telephone service throughout the United States, and more recently

throughout Canada, the Caribbean, Mexico and Puerto Rico." Paging asserts

its current business includes "providing wireless messaging, wireless e-mail

and wireless data services throughout these same territories," and offering

"these services ... by a variety of means, including, but not limited to

web sites on the global computer network, such as pagenet.com and pagenetmessage.net."

Paging avers it owns U.S. and foreign trademarks and service marks, as well

as registrations for them, relating to its paging and mobile telephone services

business. Paging has registered on the Principal Register in the United States

Patent and Trademark Office (USPTO) the following marks (Exhibit C to the Complaint):

Mark

Reg. No.

Reg. Date

First Use

PAGENET

1245604

July 12, 1983

Sept. 1981

PAGENET (Stylized)

2435509

Mar. 13, 2001

June 1995 (Footnote

1)

PAGENET NATIONWIDE

(Stylized)

1864960

Nov. 29, 1994

Oct. 28, 1993

VoiceNowPAGENET (Stylized)

2181459

Aug. 11, 1998

Feb. 1997

PAGENET IN TOUCH

AND INGENIOUS

2107504

Oct. 21, 1997

Oct. 16, 1995

PAGENET IN TOUCH

NATIONWIDE AND INGENIOUS

2107503

Oct. 21, 1997

Nov. 6, 1995

Paging asserts it owns numerous domain names, including pagenet.com,

registered August 11, 1994, pagenet.net, registered May 21, 1995, and

pagenetmessage.net, registered March 4, 1999. Copy of WHOIS information

for these domain names is at Exhibit D to the Complaint.

Paging avers its marks and domain names are "recognized by the public

and the industry as originating from a single source," and the marks and

domain names "serve to distinguish Complainant’s services from the service

of others." Paging asserts that through its efforts and high standards

it has acquired and enjoys "substantial goodwill and a valuable reputation

through Complainant’s distinctive Marks." Paging avers it has expended

"a significant amount of time and money to advertise and promote Complainant’s

services through its distinctive Marks, including, without limitation, via web

sites associated with Complainant’s Domain Names."

Paging contends the domain names in issue infringe Paging’s rights in its marks

and its prior-registered domain names.

In addition, Paging avers:

"On or about March 4, 1999, Complainant registered the domain name at

issue in this preceding [sic] -- pagenetmessage.com. Due to internal

administrative oversights, Complainant’s registration inadvertently lapsed."

b. The Complaint Re Respondents’ Activities

Paging avers that, on November 20, 2000, it became aware the pagenetmessage.com

domain name "had been registered, and was being used, by" NICS. Paging

avers it contacted NICS by email on November 21, 2000. Paging avers NICS replied:

"I am willing to sell the domain ... it is worth $5,000." Copies of

this exchange of emails appears at Exhibit E to the Complaint.

Although not entirely clear, it appears from the Exhibit E email messages (as

reconstructed and transmitted by Paging to its counsel March 16, 2001), that,

on November 20 and 21, 2000, the following occurred:

On November 20, Paging’s David R. Schmersahl, Director of Business Development,

emailed NICS at <sales@pagenetmessage.com>, asking, "How can I contact

you?" This email address apparently appeared on NICS’s website at the pagenetmessage.com

address. The NICS website apparently stated as of November 2000, (Exhibits F

and I to the Complaint):

"Pager

"Network

"Messages

"This is a service that can forward all emails to any specific person,

email, phone or pager for a fee of $10 per montH.

"For more information please email sales@pagenetmessage.com.

"This company is in no way related to PageNet, Inc. out of Texas."

On November 20, NICS emailed Paging’s Schmersahl, advising inter alia:

"You can buy a name from us and if you move from ISP to ISP you will not

have to change your email address or where it is forward [sic] to. We have several

names to choose from, two of which are:

"pagenetmessage.com

"pagenetmessaging.com."

On November 21, NICS emailed Schmersahl again, stating inter alia:

"Little did I know that when I bought the domain I would start receiving

a thousand messages and eating up my bandwidth. ... [The domain name] is a little

worthless for my needs. I called and talked to sales and they were not intrested

[sic] in the domain when I told them about my problem with it and that I was

reciving [sic] all these messages intended for Pagenet." ... As I have

spent time and have an investment in this I can no longer use I am willing to

sell the domain. At this point with the time I have in it, it is worth $5000.

... Are you the right person to talk to?"

On November 21, Schmersahl emailed to NICS:

"Yes, I would be the correct person, let me do some research and I will

give you a call."

Paging avers that, on November 22, 2000, Paging’s attorneys sent a cease and

desist letter to NICS with regard to the pagenetmessage.com domain name.

A copy of the letter appears at Exhibit F to the Complaint.

Paging avers that, on January 25, 2001, in-house attorneys for Paging sent

another cease and desist letter to NICS. A copy of the letter appears at Exhibit

G to the Complaint.

Paging avers that, on March 13, 2001, NICS’s attorney responded by offering

to "settle this dispute by transferring the domain to [Complainant] ...

for $10,000." A copy of the response is at Exhibit H. The Exhibit H letter

to Paging’s counsel refers to the dispute over "pagenetmessage.com domain

name" and states in part:

"...a representative of your client, David Schmersahl, has contacted me

directly. According to Mr. Schmersahl, you advised him to call me directly to

attempt to find a business solution to the dispute between our clients. I told

Mr. Schmersahl that my client would also like to find a business solution to

this dispute and, as an offer of settlement would sell the domain name for $10,000.

Mr. Schmersahl requested that my client provide some justification for this

amount. ...

"I have discussed my conversation ... with my client. My client feels

no need to justify his demand. He wishes to settle this dispute, be compensated

for his time and trouble in developing his site and avoid legal fees and feels

he has made a good faith offer to settle this dispute. He has authorized me

to continue settlement discussions with you and/or your client and also to reconvey

his offer to settle this dispute by transferring the domain name to your client

for $10,000.

"Please note that this letter contains an offer in settlement and therefore

is not admissible as evidence in any trial, hearing or other court proceeding."

Paging states that thereafter it commenced this proceeding

Paging avers NICS’s two domain names are confusingly similar to Paging’s marks

and domain names. Paging asserts its federally registered mark PAGENET is the

only distinctive component of the domain names. Paging points to NICS’s November

21, 2000, email message, in which NICS asserts it received "thousands of

[email] messages intended to Pagenet." Paging urges that the disclaimer

on NICS’s November 22, 2000, web site indicates that NICS recognized the confusing

similarity with Paging’s marks.

Paging asserts NICS has no rights in the domain name pagenetmessage.com

(Footnote 2) for at least four

reasons: (1) NICS charges a monthly fee for services similar to those provided

by Paging free of charge (thus, customers may have actually paid, or have been

led to believe they would have to pay, for "the service" as a result

of visiting NICS’s web site), (2) NICS does not offer goods or services for

Paging and is not related to Paging, (3) NICS’s domain names pagenetmessage.com

and pagenetmessaging.com were registered on November 9 and 14, 2000,

almost 20 years after Paging’s first use of the PAGENET mark, 17 years after

the PAGENET mark was registered with the USPTO, almost six years after Paging

registered and used its pagenet.com domain name, and one and one-half

years after Paging regularly began using its pagenetmessage.net domain

name.

Paging asserts the two NICS domain names should be considered as having been

registered and used in bad faith for at least four reasons: (1) NICS’s selection

of the two domain names was "calculated to trade off the good will"

of Paging’s marks and web site, i.e. NICS "intentionally attempted to attract

for financial gain" Internet users to Network’s web site by creating a

likelihood of confusion with Paging’s domain names and marks, (2) NICS registered

the two domain names "to prevent the owner of the [mark] from reflecting

its Mark in a corresponding domain name," (3) NICS "should have been

on notice" that Paging was using the domain names and marks; it was NICS’s

duty to determine if there were any infringement or violation of third party

rights; accordingly, NICS acted irresponsibly and in bad faith, and (4) by offering

to sell the domain name pagenetmessage.com for an amount exceeding the

costs to obtain it, NICS provided further evidence of bad faith registration

and use of pagenetmessage.com.

Paging requests that the Panel determine that the two domain names in issue

be transferred to Paging, or in the alternative, the registrations for the two

domain names be canceled.

The Complaint concludes with the requisite certification as to completeness

and accuracy and is signed by NICS’s counsel.

c. The Response

1. Identity or Confusing Similarity

NICS asserts the domain names and "the trademark" are not identical.

NICS contends the three words "page", "net" and "message"

are common words in the English language and in computer terminology. NICS cites

seven other domain names that include the term "pagenet", including

"page.net" assertedly owned by a non-party.

NICS asserts "The domain name is not identical or confusingly similar." (Footnote

3) NICS elaborates on how common the terms "net" and "page"

are in the Internet world. NICS continues:

"We use common variations of the common words when searching for domains

for our business or our customers. My understanding is that PageNet, Inc is

using pagenet.net as it’s [sic] primary web page and we are using pagenetmesaage.com

for an ecommerce page to sell Palm Pilots and other types of communication devices.

I own and use dozens of domains. One domain name is PageNetworkInstallation.com.

PageNet, Inc. made it clear that they would want this domain too as it has ‘page’

and ‘net’ components in the name. We use this domain to page our own employees

and our clients use it to page us as well. What is to stop them from taking

any domain that uses the words ‘page, ‘net’ or ‘message’ in the name? I am sure

they will be filing a dispute on the pagenetworkinstallation.com as soon as

they read this response. (Footnote 4)

"The Domain pagenetmessage.com was registered with the idea of using the

domain for messaging. NICS is already running services like this for 50 other

companies or more routing email, pages, voice mail, Palm Pilot mail, etc. We

also own about 100 domain names, some we register for our customers when requested

and others for different business ventures that NICS owns and is doing business

with."

NICS asserts that the Complaint quoted the November 2000 emails out of context.

NICS avers:

"I had no plans to sell the domain and would still like to keep and use

the domain if PageNet, Inc would stop forwarding thousands of emails to my server."

In connection with this averment, NICS quotes in part from its November 21,

2000, email.

NICS avers:

"These messages NICS was receiving were being forwarded by PageNet, Inc.’s

service to NICS servers and were causing havoc because there were so many messages

that they bombarded my systems and initially caused them to crash. I had to

acquire new equipment and more bandwidth to accommodate the extra data that

PageNet was firing at NICS servers."

NICS asserts it received harassing calls from Paging employees: "At one

point we got 10 harassing phone calls a day." NICS quotes also from portions

of Paging’s counsel’s "threatening" letter of November 22, 2000,

demanding that NICS cease and desist.

NICS avers:

"As I own and use the domain pagenetworkinstallation.com also, they made

it clear that they would want this domain too and were only going to give me

$35 for each name. They began to try to intimidate me with their harassment.

This made it very clear that a lawyer was needed and has cost me money to procure

and protect myself.

"I was making it clear I would sell the domain to them because they were

sending thousand [sic] of messages to my domain and it was difficult to tell

what is new mail. I made an effort to make sure that when people went to my

web page that they were aware that I was not related to PageNet Inc. ... I had

hopes [the disclaimer at the web page] would stop the harassing phone calls

and bombardment of emails however that apparently didn’t work. People at PageNet

are still looking up my phone number from the Whois page and calling me to harass

me from PageNet, Inc. I know this because it states PageNet on the Caller ID.

"By PageNet, Inc.’s own admission they did not pay their bill and the

domain slipped away from them. .... I do not see how this is different than

any other kind of repossession. If the Complainant did not pay their phone bill

or car payment they would be reposed [sic] and resold to the next person that

wanted it."

2. Rights or Legitimate Interest

NICS claims it has "as much right to purchase domain names that are for

sale as anyone does." NICS avers:

"I am building an ecommerce sites [sic] for the sale of messaging devices,

which I already sell. ... These items relate to my business and are very common

in the computer industry. I do not believe that this makes NICS a competitor,

as NICS does not sell the type of paging systems that PageNet, Inc sells and

mainly focuses on routing messages."

NICS states "None" in response to Paging’s averment that NICS does

not offer goods or services for PAGENET nor is NICS related to Pager.

NICS asserts it owns many different businesses and many domain names related

to other businesses "we work in such as NTInstallation.com and NTInstall.com.

We do own pagenetworkinstallation.com and the shorter version pagenetmessage.com.

... [Paging] could not possibly know what interests I have or business I own

or why I purchase domain names.

NICS asserts:

"Even though PageNet claims usage of the trademark PageNet for twenty

years, it waited until March 2001, to register it as an international trademark

class 38. As I am using pagenetmessage.com as Pager and Network Messaging Service

I am not infringing on the trademark and I have no knowledge as to when or what

PageNet, Inc. has purchased or when. Had we done an International trademark

search at the time we not have [sic] found PageNet, Inc. as it was not trademarked

an [sic] International Class 38 until March 2001, coincidentaly [sic]."

3. Bad Faith Registration and Use

NICS claims it has not profited "off of PageNet." Further:

"It has only cost me money to handle the volume of 3000 messages being

forwarded from PageNet, Inc. services to my network. The bandwidth usage has

cost me $1800 a month on my T1 lines. I have spent half of the money on the

bandwidth alone from the messages PageNet, Inc is firing at me costing me almost

$13000 so far not including my legal bills."

NICS claims inter alia:

"I could not have done anything to prevent PageNet from using their own

domain names or the use of it Trademark [sic] and do not wish to do so. I also

do not see that NICS is a competitor of PageNet, Inc. According to the use of

‘bad faith’ I would have to be a competitor and trying to take business away

or block them from their business or making money off of PageNet in some way

and this is not the case."

NICS iterates that if "we had done an International trademark search at

the time we not have [sic] found PageNet, Inc. as it was not trademarked an

International Class 38 until March 2001, coincidentaly [sic]."

Finally, NICS asserts:

"PageNet, Inc. has no idea how much money NICS has spent on this domain

name including but not limited to the more than $13000 on bandwidth, marketing,

printing, business cards and graphics setting up the company, Lawyers bills,

time absorbed but the harassing phone calls, server down time or anything for

that matter [sic]."

NICS requests the Panel to leave the registration of the two domain names in

issue "in the ownership of Scott Moulton of Network Installation Computer

Services, Inc."

The response concludes with the requisite certification as to completeness

and accuracy and is signed by Scott Moulton, NICS’s President.

5. Discussion and Findings

Paragraph 4.(a) of the Policy directs that Paging must prove, with respect

to each domain name in issue, each of the following:

(i) The domain name is identical or confusingly similar to a mark in which

Paging has rights, and

(ii) NICS has no rights or legitimate interests in respect of the domain name,

and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any

one of which, if proved by a Complainant, shall be evidence of a Respondent’s

registration and use of a domain name in bad faith under Paragraph 4.(a)(iii).

Paragraph 4.(c) of the Policy sets out three illustrative circumstances, any

one of which, if proved by Respondent, shall demonstrate Respondent’s rights

or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii).

a. Identity or Confusing Similarity

Paging has the burden of proving this element and each of the other two elements

of Paragraph 4.(a) of the Policy. It is especially important in a situation

where credibility is at issue that a Complainant meet its burden of proof.

At the outset, it is beyond dispute that, under United States law, Paging has

rights in the mark PAGENET. PAGENET is the subject of a registration on the

Principal Register of the USPTO. The registration issued almost 19 years before

NICS registered the two domain names. On this record, it is fair to infer that

Paging’s rights in the mark are incontestable under 15 U.S.C. §1065.

Paging contends that its mark PAGENET (as well as marks embodying PAGENET)

and NICS’s domain names are confusingly similar. Paging points to PAGENET as

the distinctive feature of the domain names. Ample authority supports the proposition

that the addition of a suffix such as "message" or "messaging"

does not detract from the similarity between PAGENET and the two domain names,

or from the confusing character of that similarity. E.g. State Farm v. LaFaive,

NAF FA 95407 (2000), Chanel v. Estco, WIPO

Case No. D2000-0413 (2000), and Toshiba v. Distribution Purchasing,

WIPO Case No. D2000-0464 (2000).

In addition, NICS asserts that it has received thousands of messages at its

pagenetmessage.com web site that were intended for Paging. NICS asserts

that Paging itself flooded NICS’s web site with these messages. The Panel has

no way of testing the credibility of NICS’s naked assertion as to flooding by

Paging. NICS has submitted no evidence in support of this assertion. Notwithstanding

that the Panel is tempted to find the flooding assertion implausible (the thousands

of visits appear to have occurred in a six day period commencing with the activation

of the site, infra), the Panel will give no weight on this aspect of confusing

similarity to NICS’s assertion as its receipt of thousands of messages.

Paging contends that the disclaimer at the NICS pagenetmessage.com site

evidences NICS’s awareness of potential confusion. NICS does not directly challenge

this contention. Rather, NICS asserts it displayed its disclaimer (1) "to

make sure" visitors were aware "I was not related to PageNet, Inc.,"

and (2) in hopes the disclaimer "would stop the harassing phone calls and

bombardment of emails."(Footnote

5) This NICS assertion supports the inference that NICS was aware of both

Paging and the potential for confusion.

In light of the foregoing, on this record, the Panel finds that Paging has

carried its burden of proof as to Paragraph 4.(a)(i).

b. Rights or Legitimate Interests

Paging has demonstrated with competent evidence (1) Paging’s ownership of the

PAGENET mark, (2) the validity of the mark, (3) the incontestability of the

validity of the mark and Paging’s exclusive right to use the mark, (4) the value

of the mark to Paging, (5) Paging’s continuous use of the mark since 1981--

before NICS registered the two domain names, and (6) the lack of any authorization

by Paging of NICS’s use of the domain names.(Footnote

6)

Paging’s assertions as to fees charged by NICS for services it offers through

its web sites is not relevant to the issue of NICS’s rights or legitimate interests.

Also, the fact that Paging permitted its registration for one of NICS’s domain

names (pagenetmessage.com) to lapse, even if inadvertently, does not

cut in Paging’s favor. Paging attributes this inadvertence to "administrative

oversights" -- hardly a complete or persuasive recounting of what in fact

occurred. Although the Panel cannot ascribe to Paging an intent to abandon the

registration for all time, Paging’s alternative request for relief in this proceeding

(i.e. cancellation of the domain names in issue) arguably suggests that Paging

does not regard ownership of the two domain names as of material importance

to it. This, however, does not cast revealing light on NICS’s rights or interests

in the domain names in issue vis a vis Paging’s PAGENET mark.

On this record, the question as to rights and legitimate interests resolves

to the issue of whether or not NICS has any rights or legitimate interests in

either of the two domain names in light of Paging’s prior, exclusive rights

to the PAGENET mark. On this score, NICS has not attempted to bring itself within

any of the three illustrative circumstances of Paragraph 4.(c). NICS’s generalities

as to (1) having a right to purchase domain names that are for sale, (2) building

ecommerce sites for the sale of messaging devices, (3) selling allegedly different

types of paging systems from those sold by Paging, and (4) its ownership of

many business and many domain names, including pagenetworkinstallation.com,

are not persuasive with respect to any right or legitimate interest NICS has

in utilizing the PAGENET mark, as to which in the United States Paging has conclusively

exclusive rights. Further, while NICS asserts its right to use pagenetmessage.com,

NICS does not address in any way any right to use pagenetmessaging.com.

On this record, the Panel is constrained to find that Paging has carried its

burden of proof with regard to Paragraph 4.(a)(ii) as to both domain names in

issue.

c. Registration and Use in Bad Faith

In appropriate circumstances, bad faith registration and use of a contested

domain name can be inferred from circumstantial evidence. Both registration

in bad faith and use in bad faith must be proved by Paging.

The evidence here approaches satisfying both Paragraph 4.(b)(i) and 4.(b)(iv).

Neither subsection of Paragraph 4.(b) is entirely satisfied on this record.

But when taken as a whole in light of those two subsections, the evidence leads

to the inference that NICS indeed did register and has used the domain names

in bad faith.

The analysis with regard to bad faith registration is substantially the same

for the two domain names. The analysis with regard to bad faith use differs

for each of the two domain names.

Apparently, Paging’s registration of the domain name pagenetmessage.com

lapsed before early November 2000. On November 14, 2000, NICS registered that

domain name. (On November 9, 2000, NICS had registered pagenetmessaging.com.)

It appears that by November 20, 2000, the pagenetmessage.com site was

up and running. NICS has submitted no specific evidence of the state or character

of NICS’s business as of November 2000. NICS’s averments, unsupported by any

contemporaneous documents, as to various business activities stand uncluttered

by clarifying references to time or relevant specifics. For example, NICS avers

that this specific domain "was registered with the idea of using the domain

for messaging."(Footnote 7) Immediately

following the "idea" assertion, NICS describes activities as of the

date of its response in this proceeding, viz. "NICS is already running

services ...". In addition, NICS refers inter alia to "some we register

for our customers," "NCIS owns and is doing business with," "As

I own and use," "I am building an ecommerce sites," and "we

work in such as NTInstallation.com."

None of NICS’s generalities as to its alleged business activities demonstrates

the absence of bad faith at the time NICS registered the two domain names in

issue. On the contrary, their very vagueness implies that specificity would

not benefit NICS. This implication is buttressed by events subsequent to NICS’s

registrations of the two domain names.

NICS’s asserted inability to handle the thousands of visits to the pagenetmessage.com

site -- which apparently occurred in a matter of a handful of days (i.e. between

November 14 and November 20) -- suggests strongly that NICS simply had no viable

message forwarding or other service associated with that site.

Further, NICS offered to sell that specific domain name, first for $5,000 and

then for $10,000. This confirms that NICS had no viable business associated

with the site. In addition, at minimum, the offers to sell the single site for

those sums suggest that, if NICS did not acquire the domain name in order to

sell it at a substantial profit, it took only a matter of days for NICS to recognize

the sale of the domain name presented an attractive business opportunity --

apparently far more so than trying to build and operate the site. Finally, NICS’s

offer at the site of message services, for a $10 monthly fee, plainly shows

that NICS’s intended use of the site was for commercial gain, and very likely

based on NICS’s intent to attract Internet users to the NICS site by creating

a likelihood of confusion.(Footnote 8)

In contrast to the focus on NICS’s activities with respect to pagenetmessage.com,

the submissions of the parties are silent as to any use of by NICS of the pagenetmessaging.com.

domain name. As already noted, this record provides no basis for finding that

NICS registered the "messaging" domain name without bad faith. NICS’s

use of this domain name appears to have been entirely passive. Under authority

such as Telstra v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, it is fair to infer that NICS’s passive use has been

in bad faith, viz. (1) Paging’s rights in the PAGENET mark are conclusively

exclusive, (2) Paging first used the mark 20 years before NICS’s registration

of both domain names in issue, (3) NICS has provided no evidence of actual or

contemplated use of the "messaging" domain name, (4) NICS was unable

to cope with the number of visits to the site of the similar "message"

domain name, and (5) taking into account all of the assertions by the parties

and the documentary evidence provided by Paging, it is inconceivable that NICS

could design and initiate an active use of the "messaging" domain

name that would not be illegitimate.

The Panel finds that Paging has carried its burden of proof with respect to

Paragraph 4.(a)(iii).

6. Decision

In light of the findings by the Panel, the Panel decides that Paging has met

its burden of proof with respect to each of the three elements of Policy, Paragraph

4.(a).

Accordingly, the Panel requires that the registrations of the domain names

<pagenetmessage.com> and <pagenetmessaging.com> be transferred to

Paging.

The Panel declines to order that the registrations for the two domain names

be canceled.

David W. Plant

Sole Panelist

Dated: May 31, 2001

Footnotes:

1. Paging avers first use is claimed as May 1, 1995. The copy of the TESS printout

at Exhibit C states first use was "19950600". (back to text)

2. This overall assertion is not expressly directed to pagenetmessaging.com,

except in connection with the third reason set out below. (back

to text)

3. NICS does not identify the specific domain name or that to which it is being

compared. (back to text)

4. The repeated use of the first person in much of the response is consistent

with the response having been signed by Scott Moulton, President of NICS. (back

to text)

5. The latter purpose does not ring true. It is difficult to imagine why the

disclaimer would deter Paging from the alleged flooding NICS attributes to Paging.

(back to text)

6. NICS’s assertion that Paging did not register the PAGENET mark "as

an international trademark Class 38" until March 2001, if true, is not relevant

here. Paging’s U.S. registration is, under U.S. law, conclusive evidence of

the validity of the mark and Paging’s exclusive right to use it. (back

to text)

7. The printout of the page at the site as of November 22, 2000, asserts that

the "Pager Network Messages" service "can forward all emails

to any specific person ... for a fee of $10 per month." NICS has provided

no evidence that such a service was in fact in place and operating. On the contrary,

NICS contends that it was unable to utilize the pagenetmessage.com site

because of the alleged flooding by Paging. (back to text)

8. It was only after an Internet user visited the site that the user saw NICS’s

disclaimer. The disclaimer did nothing to dispel initial confusion. (back

to text)