Omnipod, Inc. v. Ahmed Nassef

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Omnipod, Inc v Ahmed Nassef

Case No D2002-0084

1. The Parties

The Complainant is Omnipod, Inc of 440 Ninth Avenue, 8th Floor,

New York, NY10001, United States of America.

The Respondent is Ahmed Nassef of P O Box 830184, 11183 Amman, Jordan.

2. The Domain Name and Registrar

The domain name at issue is <pod.com>.

The Registrar is Internet Names Worldwide.

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint

on January 26, 2002, [electronic version] and on February 5, 2002 [hard copy].

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].

The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is February 6, 2002.

On January 29, 2002, the Center transmitted via email to Internet Names Worldwide

a request for registrar verification in connection with this case and on the

same day Internet Names Worldwide transmitted by email to the Center Internet

Names Worldwide's verification response confirming that the registrant is Ahmed

Nassef who is also the contact for both administrative and technical purposes.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, the Center transmitted on February 6, 2002, by email this

Notification of Complaint and Commencement of the Administrative Proceeding.

The Center advised that the Response was due by February 26, 2002. On the same

day the Center transmitted by fax and by mail copies of the foregoing documents

to the Respondent.

The Notification of Complaint and Complaint addressed to the Respondent's address

given in the Registrar Verification was returned to the Center on February 13,

2002.

No Response was received from the Respondent by the due date of February 26, 2002.

On February 28, 2002, Notice of Respondent Default was sent to the Complainant

and to the Respondent using the same contact details and methods as were used

for the Notification of Complaint and Commencement of the Administrative Proceedings.

On March 5, 2002, the Center received a Response from the Respondent and on

March 6, 2002, Acknowledgement of Receipt of Respondent's Response was

sent to the Respondent using the same contact details and methods as were used

for the Notification of Complaint and Commencement of the Administrative Proceedings.

By email dated March 5, 2002, the Respondent asked that the eight day delay

in submitting a Response be waived on the basis that it was due to family medical

reasons beyond his control. By email dated March 6, 2002, the Complainant requested

the Response should be rejected since any request for additional time should

have been made by the Respondent before the due date of February 26, 2002.

This is a matter for the discretion of the Panel. Here the Panel does not consider

that the eight day delay has caused any delay in the timing of the Decision.

Further, the Panel is concerned to ensure that the Parties are treated with

equality and that each party is given a fair opportunity to present its case

[Rules, paragraph 10(b)]. In the circumstances, the Panel is prepared to accept

the Respondent's late Response. However, the Complainant will see from the Decision

which follows that the Panel's reason for dismissing this Complaint is due to

inadequacies in the substance of the Complaint rather than to the Respondent's

case set out in the Response.

Having received on March 7, 2002, Mr. David Perkins' Declaration of Impartiality

and Independence and his Statement of Acceptance, the Center transmitted to

the parties a Notification of Appointment of Administrative Panel and Projected

Decision Date, in which Mr. David Perkins was formally appointed as the Sole

Panelist. The Sole Panelist finds that the Administrative Panel was properly

constituted and appointed in accordance with the Rules and the Supplemental

Rules.

On March 28, 2002, the Center received an email with a supplemental filing

from the Complainant. On April 1, 2002, the Respondent by email objected

to the supplemental filing from the Complainant. The Policy and Rules does not

foresee further submissions after the Complaint and Response, and neither has

the Complainant given any justifiable reason to make an exemption from this.

The Panel, therefore, rejects the said supplemental filing.

Having verified the communication records in the case file, the Administrative

Panel finds that the Center has discharged its responsibility under para. 2(a)

of the Rules "to employ reasonably available means calculated to achieve actual

notice to Respondents". Therefore, the Administrative Panel shall issue its

Decision based upon the Complaint, the Response, the Policy, the Rules and the

Supplemental Rules.

4. Factual background

The Complainant

4.1 The Complainant's Business and Products

The Complainant gives no information as to its business other than it has a

software product called POD and that it is s Delaware Corporation licensed to

do business in New York. Only by accessing the Complainant's website <omnipod.com>

has the Panelist been able to glean the following further information about

the Complainant and its business. The following brief particulars are given.

"Company Overview

Omnipod was founded in May 1999, with the goal of providing a powerful corporate

solution for employees, partners and customers to view, share, communicate and

store information in real-time. In September 2000, Omnipod launched the Professional

Online DesktopÔ (PODÔ

) and has provided its solution to several Fortune 1000 companies, including

Levi StrausÔ , M&M MarsÔ

and McCann-EricksonÔ .

Traditional corporate Intranets and extranets require complex software, expensive

server equipment and a dedicated internal support staff to maintain systems

and train users. The POD is a unique, turnkey solution that is cost-effective,

highly secure and centrally controlled through Omnipod's data center. With a

flexible and easily customizable interface, the POD is built to incorporate

legacy systems and reflect virtually any corporate identity."

4.2. The website also contains features entitled

- Professional Online Desktop (POD) Benefits:

- Product Features; and

- Architectural Overview

a four page document entitled

- The Premier Communication and Collaboration Solution

and another (three pages) document entitled

- The Limitations of Existing Instant Messaging and File Sharing Solutions

dated January 2002.

These documents variously feature the marks OMNIPOD, both with and without

device; PROFESSIONAL ONLINE DESKTOP (POD), both bearing the symbol TM;

and the POD.

The website also contains a September 19, 2001, Press Release offering

to donate US$2 million worth of its products and services to those companies

and organisations affected by the terrorist attacks of September 11, 2001.

This Press Release contains the following statements relating to the Complainant's

business and products.

"Through Omnipod's client/sever architecture, employees are able to download

the POD (professional online desktop) from www.omnipod.com/yourcompany and within

minutes be up-and-running with an integrated file sharing, storage and communications

tool-set. This is particularly important for companies whose employees will

be disparately located following the events of last week. In addition to the

robust and secure file transferring and search capabilities, the POD is interoperable

with Yahoo! and MSN instant messengers. Also, users are able to view and experience

numerous multimedia file formats through the POD."

and

"About Omnipod, Inc.

Founded in May 1999, Omnipod, Inc. provides a corporate network tool-set for

employees (intranet), partners (extranet) and customers (internet) to view,

share, communicate and store information. Streamlined to optimize enterprise

performance, the POD application is easy to learn, quick to deploy, simple to

integrate and requires minimal maintenance."

The POD Trademark

4.3 The Complaint provides the following information

"Omnipod has registered a trademark for the marks Omnipod, POD: Professional

Online Desktop, POD: Personal Online Desktop and Podiverse, among other marks.

The mark 'POD' was filed on June 13, 2000, and assigned the serial

number 76068419."

The Panel obtained the following information from the United States Patent

and Trademark Office trademark electronic search system (TESS) on March 12, 2002.

Application / Registration No

Mark

International Class

Date of Application / Grant

App. 73922272

OMNIPOD + device

35

Filed February 18, 2000

Allowed December 25, 2001

App. 75922271

OMNIPOD + device

9

Filed February 18, 2000

Allowed December 25, 2001

2,528,725

PROFESSIONAL ONLINE DESKTOP*

42

Filed July 7, 2000

Registered January 8, 2002

App. 76084840

PROFESSIONAL ONLINE DESKTOP*

9

Filed July 7, 2000

App. 76084838

PROFESSIONAL ONLINE DESKTOP*

35

Filed July 7, 2000

App. 76069193

PODIVERSE

35

Filed June 13, 2000

App. 76068416

PODIVERSE

42

Filed June 13, 2000

App. 76068415

PODIVERSE

9

Filed June 13, 2000

Allowed May 22, 2001

App. 76068419

POD

9

Filed June 13, 2000

4.4 The asterisked marks record August 29, 2000, as first use

in commerce. The remaining applications are filed with intention to use.

The application for POD was refused on December 19, 2001.

There is, therefore, no registered US trademark for the mark POD, nor is there

a registered US trademark for a mark including the word POD. The Complainant

has advanced no claim to common law rights in the trademark POD.

The <pod.com> Domain Name

4.5 The Complaint states that the <pod.com> domain name was purchased

by the Complainant for the sum of US$18,000. The WHOIS Search attached to the

Complaint, however, shows only the Respondent as the original registrant when

the current domain name was created on January 11, 2000. The Panel

can only assume that there was a <pod.com> domain name registered prior

to January 11, 2000, which was transferred to the Complainant as a

result of the acquisition but that the address entered was that of the Respondent

[see, paragraph 5.1.5 below]. The Complaint is unclear in this respect and nothing

in the Response clarifies it.

The Respondent

4.6 The Response states that the Respondent is involved in the business

of "marketing consulting". It gives no further information.

4.7 The Panelist has accessed the domain name in issue which is stated to

be under construction and contains the following:

"This site is hosted by Netfirms Web Hosting

COMING SOON

Under Construction

Contact us

For now, here are some other "POD" related sites you may want to visit:

http://www.apple.com.ipod/

Official site of the Apple iPOD

http:///www.bodpod.com/

Body Composition System

http://www.pod.com.sg/

A great mobile/Internet communications platform from Singapore Telecom

http://www.omnipod.com/

A B2B Internet based communications application

http://www.payableondeath.com/

The Official P.O.D. band site

http://www.podnetwork.og

Professional and Organizational Development Network in Higher Education

http://www.podboy.net/

Unofficial Chris Vrenna site for NIN fans"

4.8 The Complaint describes the Respondent as "… a former disgruntled employee

of the Claimant."

5. The Parties' Contentions

5.1 The Complainant's Case

5.1.1 Identical or Confusingly Similar

The Complainant claims rights in the trademark POD by virtue of a US trademark

application for POD [Class 9] filed June 13, 2000; other US trademark

applications incorporating the word POD filed during the year 2000; acquisition

of the domain name in issue at an unspecified date prior to the events complained

of; and first use in commerce on August 29, 2000, of the trademark

Professional Online Desktop.

5.1.2 The Complaint states that the domain name in issue is obviously better

suited for use in conjunction with its "the POD" software then "as a one page

placeholder for a consulting service called Nassef Consulting".

5.1.3 Based on the foregoing, the Complaint asserts that the domain name

in issue is identical or confusingly similar to a trademark in which the Complainant

has rights.

Rights or Legitimate Interests

5.1.4 The Respondent is (as stated) described as a former disgruntled employee

of the Complainant who, while employed by the Complainant was in charge of marketing

the Complainant's POD software and assisted in negotiations to acquire the <pod.com>

domain name for US$18,000.

5.1.5 Put shortly, the Respondent is accused of misappropriating the domain

name in issue by registering his personal contact details rather than those

of the Complainant company at the time when the domain name was acquired by

the Complainant. As a consequence, notice of the date for renewal was never

received directly by the Complainant. Instead, on December 29, 2001

- less than two weeks before the due renewal date - the Respondent sent a single

email to an officer of the Complainant asking if the Complainant had any interest

in renewing that domain name. [Since the Registrar Verification shows that the

domain name in issue was registered on January 11, 2000, and the expiry

date as January 11, 2003, the December 29, 2001 date is

presumably an error.]

5.1.6 That officer was on vacation at the time and was unable to access

the email The Respondent allowed the domain name to expire and then himself

re-registered it on the same day, namely January 11, 2000. This the Respondent

did in the full knowledge of the Complainant's business, its products and its

trademarks, having [as stated in paragraph 5.1.4 above] been in charge of marketing

the Complainant's POD software whilst an employee of the Complainant.

5.1.7 The Respondent is making no use of the domain name in issue other

than as a "placeholder" [see, paragraph 4.7 above]. The Complaint states:

"Respondent has placed only a single page website on the new "pod.com" site

and clearly has no connection with Omnipod, the POD software or anything else

connected with the word POD."

5.1.8 The Respondent has no registered trademarks for anything containing

the word POD.

5.1.9 The Complainant's case is that, in the circumstances, the Respondent

has no rights or legitimate interests in the domain name in issue.

Registered and Used in Bad Faith

5.1.10 The assertions set out in paragraphs 5.1.4 to 5.1.9 above are also

relevant to this requirement of the Policy. In addition, the Complaint states

that since January 11, 2001, in follow up email and telephone correspondence

between the parties, the Respondent asked the Complainant to "make an offer"

for transfer of the domain name in issue. The Complainant made a written offer

of US$35.00, being the price of registration according to the Respondent, but

no Response was made to that offer. The Complaint states that the Respondent

has told the Complainant in conversation.

"[He] knows what we originally paid for pod.com [US$18,000] and that [Complainant's

offer] had to be in that range."

5.1.11 In the circumstances, the Complainant asserts that the domain name

was registered by the Respondent on January 11, 2001, in bad faith and is being

used by the Respondent in bad faith.

5.2 The Respondent's Case

5.2.1 The Complainant's Trademark Rights

The Respondent's case is that the Complainant has no trademark rights in the

word POD because:

- the domain name in issue was registered by the Respondent on January 11,

2000, before the Complainant's application on June 13, 2000, to register

POD as a US trademark; and

- the US Patent and Trademark Office has issued over 300 trademarks containing

the letters POD, including some subsisting registrations for POD simpliciter

in the names of third parties.

From the list forming Annex A to the Response, the Panel has carried out a

TESS search against registered marks for POD simpliciter which are shown as

being live registrations. The results are tabulated below:

US Registration No

Mark

Proprietor

International Class(es)

Dates Filed / Registered

2,391,938

The Pod

D J Livingston & Co Inc

9

Filed January 27, 1998

Registered October 3, 2000

2,210,465

POD and device

Ikepod Watch Company A.G.

14

Filed July 7, 1997

Registered December 15, 1998

2,210,464

POD

Ikepod Watch Company A.G.

14

Filed July 7, 1997

Registered December 15,1998

2,359,019

THE POD

Peapod Inc

35

Filed June 10, 1997

Registered June 20, 2000

2,168,364

Pod (stylised)

POD Hardboards Pty Ltd

28

Filed September 26, 1996

Registered June 23, 1998

2,086.558

POD

UBI Soft Inc

28

Filed March 28, 1996

Registered August 5, 1997

2,388,940

Pod (stylised)

The William John Dickinson et al Partnership

25

Filed June 9, 1994

Registered September 26, 2000

1,861,641

POD

Havant International Ltd

9

Filed July 7, 1997

Registered December 15, 1998

1,863,522

POD

Havant International Ltd

9

Filed July 7, 1997

Registered December 15, 1998

1,805,305

POD

Chrysalis Incorporated

20

Filed March 5, 1991

Registered November 16, 1993

882,329

POD

Baker Perkins Inc

7

Filed December 20, 1965

Registered January 17, 1967

Identical or Confusingly Similar

5.2.2 The Respondent states that it has received no Complaint or enquiry

from any customer or potential customer who claims to have been searching for

the Complainant's business through the domain name in issue. The only specific

enquiries have been from fans of a rock band called POD.

Rights or Legitimate Interests

5.2.3 Because POD is generic - as demonstrated in paragraph 5.2.1 above

- the Respondent is entitled to develop a website under the domain name in issue

or to sell that domain name.

Registered and Use in Bad Faith

5.2.4 The Respondent points to its email notification to the Complainant

of the renewal date of the domain name in issue as indicative of its bona fides.

The Respondent says that he waited for a response from the Complainant "… until

the very last available moment before the domain would have become available

to the public."

5.2.5 The Respondent explains that he is involved in the

"… business of marketing consulting, a wholly different business from that

of the Complainant."

and did not register the domain name in issue in order to disrupt the Complainant's

business.

5.2.6 The Respondent denies offering to sell the domain name in issue to

the Complainant [see, paragraph 5.1.10 above].

6. Discussion and Findings

6.1. The Complainant's Trademark Rights

6.1.1 The Complainant's website refers to its starting in business in May 1999,

[see, paragraph 4.1 above]. The Complainant's US trademark application for the

PROFESSIONAL ONLINE DESKTOP mark claims first use in commerce of that mark on

August 29, 2000 [see, paragraphs 4.3 and 4.4 above].

6.1.2 It is clear from the Complainant's website that the POD is used as

a trademark in relation to its Professional Online Desktop Software, which was

launched in September 2000, and that it boasts several multinational corporations

as users of that product, for example Levi Straus; Mars; Nestlé and McCann-Erikson

[see again paragraph 4.1 above].

6.1.3 The Policy does not require that a Complainant's trademark rights

must be registered. Trademark rights may arise by virtue of use and reputation,

for example common law trademarks. The evidence in the Complaint is flimsy.

Refusal of US trademark Application No. 76068419 [see, paragraph 4.4 above]

is not, however, fatal to the Complainant. Further, the fact that there are

third party US trademark registrations for POD in various classes [see, paragraph

5.2.1] does not preclude the Complainant from having trademark rights in relation

to its particular product.

6.1.4 This is, in the Panel's view, a borderline case. The Complaint does

not provide the evidence normally expected to support a claim to unregistered

trademark rights. On the basis of the material contained in the Complainant's

website, it may well be that the Complainant has trademark rights for the word

POD for the purpose of the Policy. Although the, apparently unsuccessful, US

trademark application for POD was not filed until June 2000, and use of that

mark did not begin until September 2000, if the Complainant has trademark rights

in POD, those rights would not in the Panel's view necessarily be defeated by

the earlier registered [January 2000] domain name in issue.

6.1.5 However, it is not for this Panel to speculate as to what the position

may, or may not, be. There is inadequate evidence in the Complaint to support

s finding that the Complainant has trademark rights in the mark POD and for

that reason the Complaint must fail.

6.2 Identical or Confusingly Similar

In the absence of finding that the Complainant has trademark rights in the

POD mark for the purposes of the Policy, it is obviously not necessary to comment

in relation to this requirement.

6.3 Rights or Legitimate Interests

6.3.1 Again, since the Complaint fails to meet the requirement of paragraph

4a (i) of the Policy, it is not necessary to decide this issue. However, had

the Complainant been able to satisfy the requirement of paragraph 4a(i) of the

Policy, the Panel would have held in the Complainant's favour under paragraph

4a(ii) of the Policy.

6.3.2 In this respect, the Respondent does not deny that

▪ the Complainant purchased the domain name in issue for US$18,000.00;

▪ he, the Respondent, was involved in the negotiations leading to

that acquisition at a time when he was employed by the Complainant;

▪ he, the Respondent, entered his own particulars as the contact details

for the domain name rather than those of the Complainant who had beneficially

acquired that domain name;

▪ he gave the Complainant less than 2 weeks notice of the due date

for renewal of that domain name;

▪ he, as a former employee of the Complainant who had been in charge

whilst employed by the Complainant for marketing its POD product, nevertheless

renewed or registered (it is not clear) the domain name in his own name; and

▪ now asserts that he is free to use that domain name for his own

purposes or to sell it to another party.

6.3.3 Plainly, the Respondent cannot bring himself within any of the circumstances

set out in paragraph 4c of the Policy which would demonstrate his rights or

legitimate interests in the domain name in issue. The equities are all in the

Complainant's favour.

6.4. Registered and Used in Bad Faith

6.4.1 Again, as the Complaint fails to meet the first requirement of paragraph

4a of the Policy, it is not necessary to decide this issue. However, if the

suggestion in the Response is that the Complainant voluntarily abandoned any

claim to the domain name in issue by failing to respond within the 13 days

notice of the due renewal date given by the Respondent to the Complainant [see,

paragraphs 5.1.5: 5.1.6 and 5.2.4 above], then the Panel rejects such suggestion.

6.4.2 There is a dispute between the parties [see, paragraphs 5.1.10 and

5.2.6 above] as to whether the Respondent offered to sell the domain name to

the Complainant, whether for something in the region of US$18,000.00, or at

all. However, were that the only difference between the parties, it would not

- had the Complainant met the threshold of paragraph 4a(i) of the Policy - have

precluded the Panel from making a finding in favour of the Complainant under

paragraph 4a(iii) of the Policy

6.5. Other Proceedings

6.5.1 The Complaint states that the Complainant is preparing a breach of

contract lawsuit against the Respondent. It does not say whether misappropriation

of the domain name in issue alleged in this Complaint will form a part of that

lawsuit. This may well be a possibility. The Panel can only speculate since

the Center has not been notified that any such legal proceeding has been commenced

[Rules, paragraph 18].

6.5.2 Is it open to the Complainant to bring a fresh Complaint under the

Policy in order to deal with the deficiencies in this Complaint? In this respect,

the Panel refers to WIPO Case No. D2001-1041

[Jones Apparel] which summarises various decisions under the Policy concerning

the re-litigation of a Complaint. This administrative proceeding is, in the

Panel's view, closer to the factual situation in the Furrytails case

[NAF Case No. 96532] and the Jones Apparel case. Here the Complaint is

so lacking in substance that it would not be practical for the Panelist to request

further statements or documents pursuant to Rules, paragraph 12. That provision

is not intended to permit a Panelist to advise a party how to write its Complaint

or Response, as the case may be. Although as stated above, this is a case where

the equities appear to be firmly in the Complainant's favour, it is for the

Complainant properly and fully to plead its Complaint. However, the Panel must

make it clear that should the Complainant decide to file a further Complaint,

it will be for a future Panelist, if and when appointed, to decide on the admissibility

of that Complaint.

7. Decision

The Complainant has not made out its case under paragraph 4a(i) of the Policy

and for that reason the Complaint is dismissed.

David Perkins

Sole Panelist

Dated: April 20, 2002