John D. Polstra v. CvsUp Ltd.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

John D.

Polstra & Co., Inc. v. CvsUp Ltd. and John Wesley

Case No.

D2001-0586

1. The Parties

Complainant is the John

D. Polstra & Co., Inc., and according to its Complaint, it is a corporation

incorporated under the laws of the State of Washington, USA, with its principal

place of business in Seattle, Washington, USA.

The Respondents have not

responded to the Complaint, but according to paragraph II(B) of the Complaint

which references the registrant database of Register.com, the registrar involved,

as well as the materials submitted by the WIPO Arbitration and Mediation Center

(hereafter "The Center"), the first Respondent in this proceeding

is the entity CvsUp, Ltd. The second Respondent is John Wesley, with address

listed at 31, 4th Street, San Francisco, CA 94103, USA.

2. The Domain Names

and Registrar

The dispute is with respect

to the following related domain names (hereafter "the domain names"):

<cvsup.com>

<cvsup.net>

<cvsup.org>

The registrar with which

these domain names are registered is Register.Com, 575 8th Avenue, 11th

floor, New York, NY 10018, USA (hereafter "the registrar").

3. Procedural History

The procedures for resolving

Complaints like this one are governed by the Uniform Policy for Domain Name

Dispute Resolution (hereafter "The Policy") adopted by the Internet

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

ICANN’s Rules for Uniform Dispute Resolution Policy (hereafter "The Rules"),

as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center

(hereafter "The Supplemental Rules").

The current dispute lies

within the scope of the Policy, so that this WIPO Administrative Panel does

have proper jurisdiction to hear and decide this dispute. The terms and conditions

of the registration agreement between the Registrar and the Respondents clearly

incorporate the Policy, so that Respondents were notified of the existence of

the Policy’s provisions for domain name dispute resolution. The Policy contains

in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative

proceeding such as this one to be held: Complainant must allege that a (i) Respondent’s

domain name is identical or confusingly similar to a trademark or service mark

in which the Complainant has rights; that (ii) Respondent has no rights or legitimate

interests in the domain name; and that (iii) Respondent’s domain name has been

registered and is being used in bad faith. See the Policy, Paragraph 4(a). In

order to successfully make its case, the Complainant must prove each of these

three elements.

An electronic and hard

copy of the complaint were filed on April 23-24, 2001. A request for Registrar

Verification was made to the Registrar of the domain name on April 27, 2001

and such Verification was made on April 30, 2001. On May 1, 2001, the Center

notified the Registrar of the filing of the Complaint with the Center. On May

1, 2001, notification of the Complaint was sent to Respondent by email to cvsup@usa.net,

to postmaster@cvsup.com, postmaster@cvsup.net, and postmaster@cvsup.org, but

this emails were not delivered successfully because these email addresses were

apparently not active. Records provided by the Center indicate the Center also

attempted to notify Respondent by post/courier, but that the courier envelope

was returned undelivered to the Center.

Under the terms of the

Center’s notification to Respondent of May 1, 2001, the last day for Respondents

to send their Responses to the Complaint to the Center and to the Complainant

was May 22, 2001. Although no Response has been received, under Paragraph 14

of the Rules, the Administrative Panel may choose to go ahead and review the

facts in the case and make its decision based upon the facts before it at this

time, as well as drawing any appropriate inferences from Respondent’s failure

to respond.

The Panel consists of a

single Panelist pursuant to Complainant’s request, and the Panelist was duly

appointed by the Center. A Statement of Acceptance and Impartiality and Independence

was submitted to the Center by the Panelist on May 29, 2001, and the Panelist

was appointed by the Center on May 31, 2001. A decision on the Complaint is

due within 14 days of the appointment of the Panel under Paragraph 15(b) of

the Rules.

There have been no further

submissions by either side as of the date of this decision.

4. Factual Background

First, it is noted that

because no Responses have been received from Respondents, the facts cited in

the Complaint will be evaluated on their own merits.

Complainant states that

for a long time prior to Respondent’s registration of the domain names that

are the subject of the Complaint, Complainant has continuously used the name

and trademark "cvsup" in connection with its computer file system

products and services. Although Complainant has not yet received its U.S. trademark

registration for the name "cvsup", the Complaint alleges that Complainant

has made application to the U.S. Patent and Trademark Office for this registration

on or about December 22, 2000, with first use of this mark by Complainant on

or about August 3, 1996. See Complaint, paragraph 12(b)(i).

In addition, Complainant

alleges that from its several years of widespread use, the "Cvsup"

trademark has become one of a class of "famous marks" worldwide. See

Complaint, Paragraph 12, at pp. 18-19.

5. Parties’ Contentions

Again, because no answer

has been received from Respondents, the contentions cited herein will be those

of the Complainant only.

Complainant avers that

(1) the domain name is identical or confusingly similar to Complainant’s "Cvsup"

product name referred to in Section 4 of this decision; (2) the Respondents

have no rights or legitimate interests in the trade name; and (3) the domain

name was registered and is being used in bad faith.

The Panel notes that these

elements are often intertwined and not separate. For instance, bad faith by

Respondent (element 3) may often be proven by its attempt to create confusion

(element 1) between Respondent and Complainant’s activities.

In respect of these elements,

Complainant alleges that Respondents:

(1) have deliberately

created three websites with domain names confusingly similar to the Complainant’s

product name for which Complainant is now seeking U.S. trademark registration;

(2) have demonstrated

no intellectual property or other rights, or any positive commercial or other

legitimate interest in this domain name; and

(3) as an act illustrating

their bad faith, have deliberately concealed their identities and whereabouts.

As a result, Complainant

asks this Panel to issue a decision to the effect that the domain name be transferred

to Complainants, in accordance with Paragraph 4(i) of the Policy.

6. Discussion and Findings

Based on the facts and

contentions referenced above, the Panel finds as follows:

a. As Respondents have

not disputed any allegations of fact by Complainant in Paragraph 4 of this Decision,

the Panel accepts these allegations as true.

b. Complainant has adequately

demonstrated its own intellectual property rights in the trademark "Cvsup"

in the relevant trademark product/service international classes. Although the

U.S. trademark registration has not yet been processed by the U.S. Patent and

Trademark Office, there is no evidence that the registrations would be denied,

especially in light of the more than four years of active usage of the mark

in commerce by Complainant. And U.S. trademark law puts a premium on active

commercial use of a mark, as opposed to registration alone, in order to acquire

rights in that mark.

c. As regards proof

of element (1) in Paragraph 5 above, the confusion element, the Panel visited

Respondent’s three websites on June 1, 2001, and found identical "Coming

Soon" banners on each of them from the Registrar, Register.com, which contain

advertisements and promotions from Register.com. Respondent apparently registered

all three domain names on June 26, 2000, (see Complaint, Paragraph 12(c)). They

have been fallow for almost one year now, and so it is not clear when "Coming

Soon" may materialize.

However, according to the

WHOIS database materials submitted by the Registrar and the Center for the domain

names in this case, the period to renew the registrations will expire on June

26, 2001. To date, there is no record of Respondent’s attempt to renew the registrations.

The Panel finds that the

element of confusion does exist between the domain names at issue and Complainant’s

trade name. Some probability of confusion with Complainant’s products, services

and activities also exists, but may not be exceedingly high given the fact that

there is no evidence that Respondent is targeting primarily computer users or

others with particular interest in Complainant’s specific sphere of activity.

d. As regards proof

of element (2) above, the lack of legitimate interest or rights in the trade

name, Respondents have failed to assert any such interest or right. Therefore,

the Panel finds that Respondents do not have any such interest or right.

e. As regards proof

of element (3) above, the registration and use in bad faith by Respondents

of the domain names, this is a very close call.

Several WIPO Panels have

concluded that Complainant must prove both bad faith registration of the domain

name by Respondent and bad faith use as well. This Panel concurs.

Paragraph 4(b) of the Policy

cites, without limitation, various examples of both registration and

usage of a domain name in bad faith. Complainant has frequently cited the WIPO

Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows,

from Australia. In that case, the Panel found that Respondent’s failure

to respond or to be properly located, coupled with its registration of the highly

famous Australian mark "Telstra", constituted bad faith registration

by negative inference.

The Panel made it clear

in that case that "bad faith" is not an abstract concept, but must

be defined according to the circumstances of each case.

The Panel in this present

case agrees.

(i) Bad faith registration

by deliberate concealment of Respondent’s identity and whereabouts. This

is not listed as a specific example of bad faith in the Policy or Rules. Nevertheless,

when combined with other circumstances, this kind of concealment can give rise

to a presumption of bad faith by Respondent, as was found in the Telstra

case as well as another WIPO Administrative Panel Decision, Capital Broadcasting

Company, Inc. v. Private (WIPO Case No.

D2000-1609), involving a U.S. Complainant and a Russian Respondent.

Complainant has provided

more than adequate details of its attempts to locate Respondents via various

investigative means, all to no avail. Respondent CvsUp Ltd. appears not to be

legally registered with the corporation authorities in the State of California,

and Respondent John Wesley appears not to be locatable at the physical, phone

or email addresses he provided to the Registrar. Indeed, this Panel has no evidence

whether Mr. Wesley is alive or not. We do not know if Respondents are deliberately

avoiding contact, or have simply given up their interest in the domain names

and moved on.

The question before this

Panel is what other factors will combine with Respondent’s non-responsiveness

to the Registrar, Complainant, and the WIPO Center, so as to give rise to the

presumption of bad faith registration by Respondent?

(ii) Bad faith use of

the domain name by deliberately creating confusion with Complainant’s Name and/or

activities. Referring back to the discussion above on the relationship between

the bad faith element and the confusion element, the Panel finds that here,

although Complainant’s product name "cvsup" may be well known to a

specialized subset of computer engineers and technicians, this does not approach

the degree of notoriety of the Australian mark "Telstra."

In the Telstra case,

the likelihood of confusion between Complainant’s own website and Respondent’s

domain name was very high and readily exploitable by Respondent, since Complainant

had registered the domain names <telstra.com>, <telstra.net>, and

<telstra.com.au> among others, while Respondent had registered <telstra.org>.

In the present case, Complainant has apparently not registered any other domain

names using the "cvsup" core name - although this may be due in part

to the fact that Respondent had already registered the three most obvious ones

- <cvsup.com>, <cvsup.net> and <cvsup.org>. Nevertheless,

Telstra is the largest company listed on the Australian stock exchange and largest

provider of telecommunication and information services in Australia, an undisputedly

dominating position and trade name not mirrored in the present case by Complainant’s

position.

(f) Complainant is asking

this Panel to conclude that Respondents’ non-responsiveness to its inquiries

and to this Complaint, coupled with Respondent’s lack of use of the domain names

for almost a year, constitutes bad faith in registration and use of the domain

name.

While sympathetic to Complainant’s

position, this Panel cannot go that far. The Panel in the Telstra case

concluded that inaction by Respondent with respect to the contested domain name

could constitute bad faith use of the name, based on five factors. The first

factor listed, however, is the very strong reputation of Complainant’s trademark

both in Australia and elsewhere. This degree of fame gave rise to a presumption

by the Panel in the Telstra case that Respondent in that case must have

known about Complainant’s high reputation in the marketplace and registered

the domain name to take improper advantage of it. The Panel in the present case

does not find the same degree of fame in Complainant’s trade name, the knowledge

of which is limited to a much smaller subset of people and the U.S. registration

of which is still pending.

Therefore, this Panel finds

that Complainant has not proven bad faith registration or use by Respondent

on the set of facts presented here.

7. Decision

Based upon the Panel’s

findings from Section 6 above, and under its authority vested by Paragraph 4(i)

of the Policy, the Panel concludes that there is not sufficient evidence of

bad faith to cancel Respondents’ domain name registrations and transfer them

to Complainant at this time. However, the Panel takes due note of the upcoming

renewal dates for these domain names by Respondents, and recommends that Complainant

do the same in case Respondents fail to renew the registrations on time.

Paul E.

Mason

Sole Panelist

Dated: June

20, 2001