Photodex Corporation v. Michael Bannen, ClickGuide.com; Michael Bannen, ClickGuide.com, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Photodex Corporation v. Clickguide.com and Michael Bannen

Case No. D2001-0952

1. The Parties

The Complainant in this administrative proceeding is Photodex Corporation,

a corporation organized and existing under the laws of Texas with a place of

business at 1106 Clayton Lane, Suite 440W, Austin, Texas 78723, U.S.A.

The Respondents are Michael Bannen and ClickGuide.com, whose address is 1906 Burton

Avenue, Holt, Michigan 48842, U.S.A.

2. The Domain Name and Registrar

The domain name in dispute is as follows: clicksearch.com. The domain name

was registered with Network Solutions, Inc. (NSI) on November 16, 1998.

3. Procedural Background

On July 24, 2001, the WIPO Arbitration and Mediation Center received from Complainant

a complaint for decision in accordance with the Uniform Policy for Domain Name

Dispute Resolution, adopted by the Internet Corporation of Assigned Names and

Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform

Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(Supplemental Rules).

On July 27, 2001, and August 2, 2001, WIPO e-mailed Complainant's attorney

requesting Complainant to amend the complaint to reflect the fact that the disputed

domain name was registered with NSI and not, as set forth in the original complaint,

with Register.com and to amend the "Mutual Jurisdiction" section of the Complaint.

Complainant, thereafter, amended the complaint to indicate that the domain name

was registered with NSI and elected to submit to the jurisdiction of the courts

in the United States District Court for the Eastern District of Virginia, where

the principal place of the concerned registrar, NSI, is located, with respect

to any challenge to a decision to transfer or cancel the domain name.

The instant Administrative Proceeding was commenced on August 3, 2001.

On August 17, 2001, Respondent requested an extension of time to file its Response.

WIPO granted such request, and a Response was filed on August 29, 2001.

On October 8, 2001, WIPO informed the parties of the appointment of the three-person

Administrative Panel. Each panelist submitted the required Statement of Acceptance

and Declaration of Impartiality and Independence.

The decision of the Panel was due to WIPO on or before October 21, 2001.

4. Factual Background

Complainant Photodex Corporation and its predecessors in interest and title

have, since February 1994, used the mark CLICKSEARCH for computer software used

for searching data. Photodex owns U.S. Trademark Registration No. 1,918,764

for the mark CLICKSEARCH, as used for "computer utility software for searching

data." The registration issued on September 12, 1995. See Complaint, Annex C.

Respondent Clickguide, Inc. was founded in November 1998. As noted above, Respondent

registered the domain name <clicksearch.com> with NSI on November 16, 1998.

Since its inception, Clickguide has developed several Internet navigation and

search tools, including the so-called "Click Search" product. Between November

1998, and the launch of the "Click Search" product in April 2001, Clickguide

developed its software products, filed a provisional patent application and

sought funding for the business. See Response, Exhibit B (Affidavit of Michael

Bannen). Respondent prepared a business plan for the "Click Search" product

on April 5, 2000. See Response, Exhibit F.

On April 19, 2001, counsel for Photodex sent Respondent a communication demanding

that Respondent promptly transfer the disputed domain name to Photodex. See

Complaint, Annex D. According to Respondent, this was the first time Respondent

had heard of Complainant or of its CLICKSEARCH mark. Respondent did not reply

to this communication.

On May 23, 2001, Complainant's counsel sent via certified mail, return receipt

requested, a follow-up letter to Respondent. See Complaint, Annex E. This letter

came back unclaimed refused. On June 18, 2001, Photodex's counsel attempted

to fax the April 19 and May 23 letters to Respondent; however, the number was

out of service. See Complaint, Annex F. On June 19, 2001, Photodex's counsel

sent a letter to Respondent enclosing the April 19 letter to Respondent's newly

listed address in Lansing, Michigan. See Complaint, Annex G. To date, Complainant

has not received a response to this letter.

5. Parties' Contentions

Complainant contends that the domain name in issue is confusingly similar to

its CLICKSEARCH mark. It further argues that Respondent has no legitimate interest

in the domain name, given that the <clicksearch.com> domain name is used

to sell and promote the same computer software products as sold by Complainant.

Finally, Complainant contends that the domain name was registered and is being

used in bad faith. According to Complainant, the requisite bad faith exists

in this case because the evidence establishes that: (1) Respondent had constructive

notice of the existence of the CLICKSEARCH registration; (2) Respondent is intentionally

attempting to disrupt Complainant's business and to attract for financial gain

Internet users to Respondent's website by creating a likelihood of confusion

with Complainant's mark; (3) Respondent has advertised and sold software products

identical to those offered for sale by Complainant in an effort to disrupt Complainant's

business and to create a likelihood of confusion as to the source of Respondent's

products; (4) Respondent's use of the domain name creates initial interest

confusion; (5) Respondent failed to transfer or to cancel the domain name

despite Photodex's clear objection; (6) Respondent does not have a license to

use the CLICKSEARCH mark; (7) Respondent has refused to cooperate with

Photodex to resolve the dispute and continues to use the name; and (8) Respondent

failed to respond to any of Complainant's communications.

In its Response, ClickGuide.com, Inc. contends that consumers are not likely

to confuse the parties' marks, even if they are identical, since the marks are

targeted at distinct users and markets. Respondent further argues that it has

established legitimate use of the domain name under para. 4(c)(i) and (ii) of

the Policy. In this regard, it notes that it has been using the domain name

to offer the "Click Search" product since April 2001, and has been

preparing to offer software at <clicksearch.com> since November 1998,

some two and one-half years before Complainant initiated this dispute.

Respondent also maintains that there is no evidence of the requisite "bad faith"

registration and use. It points out that there has never been a suggestion that

the disputed domain name is for sale and that there is no evidence that: (1)

ClickGuide was aware of the CLICKSEARCH mark; (2) it registered the domain name

to disrupt Complainant's business; or (3) it intentionally used the domain name

to attract or mislead consumers.

6. Discussion and Findings

The Panel has carefully reviewed the evidence presented and determines that

Complainant has not met all the requirements set forth in para. 4(a) of the

Policy.

As an initial matter, the Panel concludes that the domain name in dispute --

<clicksearch.com> -- is confusingly similar to the CLICKSEARCH mark. The

Panel emphasizes that this determination is based solely on a comparison of

the name and mark. Thus, Respondent's argument that, based on the Lanham Act's

multi-factor likelihood of confusion analysis, the domain name and mark are

not confusingly similar has no force in this administrative proceeding [1]

and must be rejected.

The Panel further concludes, however, that Respondent has rights or legitimate

interests with respect to the domain name. More specifically, the Panel finds

that, before any notice to Respondent of the dispute, Respondent used or demonstrably

prepared to use the domain name in connection with a bona fide offering of goods

or services, within the meaning of para. 4(c)(i) of the Policy. The evidence

establishes that Respondent has been using the disputed domain name to offer

its "Click Search" product since April 2001, and has been preparing to

offer software at <clicksearch.com> since November 1998, some two and

one-half years before Complainant initiated this dispute.

Finally, the Panel concludes that the available evidence does not establish

registration and use of the domain name in "bad faith." There is no evidence

that Respondent attempted to sell or transfer the domain name to Complainant

or anyone else. Moreover, given the sworn testimony of Respondent's founder

and CEO to the effect that he never heard of Photodex or of the CLICKSEARCH

mark prior to April 2001, the Panel concludes that none of the circumstances

set forth in para. 4(b) of the Policy is applicable.

7. Decision

In view of the above, the Panel denies Complainant's request for transfer to

it of the domain name <clicksearch.com>.

Jeffrey M. Samuels

Presiding Panelist

Tom Arnold

Panelist

Daniel Banks

Panelist

Dated: October 21, 2001

Footnotes:

1. In this regard, the Panel reminds the

parties that the instant administrative proceeding is not equivalent to a trademark

infringement suit. The Panel's decision is not a determination of any kind on

the issue of trademark infringement. Unlike the instant UDRP proceeding, the

issue of trademark infringement is decided based, at least in part, on a comparison

of the parties' marks and the goods and/or services on or in connection with

which the marks are used.