NetDeposit, Inc. v. NetDeposit.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NetDeposit, Inc. v. NetDeposit.com

Case No. D2003-0365

1. The Parties

The Complainant is NetDeposit, Inc. of Salt Lake City, Utah, United States of America, represented by Ron Titus of the United States of America.

The Respondent is NetDeposit.com of Springville, California, United States of America, represented by Ari Goldberger, ESQwire.com, United States of America.

2. The Domain Name and Registrar

The disputed domain name <netdeposit.com> is registered with Go Daddy Software of Phoenix, Arizona, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2003. Also on May 13, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification of the disputed domain name. Again on May 13, 2003, Go Daddy Software transmitted by email to the Center its verification response stating that the Respondent, Netdeposit.com, is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Complaint was addressed to Mike Emke as Respondent, but Go Daddy Software

reported to the Center that Mr. Emke was the administrative contact, not the

registrant of the disputed domain name. Therefore, the Center notified the Complainant

of this Complaint deficiency on May 19, 2003, and on the same day

the Complainant corrected it with a Complaint Amendment.

The Center verified that the Complaint together with its Amendment satisfied

the formal requirements of the Uniform Domain Name Dispute Resolution Policy

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

Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and this proceeding began on May 23, 2003.

In accordance with the Rules, paragraph 5(a), the due date for the Response

was set at June 12, 2003. The Response was filed with the Center on

June 13, 2003, but apparently was timely sent from the United States

of America.

The Respondent having requested a three-member Panel, the Center appointed

Dennis A. Foster, Maxim H. Waldbaum and David E. Sorkin

as panelists for this case on July 9, 2003. The Panel finds that it

was properly constituted. Each member of the Panel has submitted the Statement

of Acceptance and Declaration of Impartiality and Independence, as required

by the Center to ensure compliance with the Rules, paragraph 7.

On June 23, 2003, the Complainant submitted a Supplemental Filing

to the Center. The Panel has examined it and has decided to exclude it from

the record of this proceeding. Paragraph 12 of the Rules gives the Panel

the "sole discretion" to decide whether there will be supplemental

filings in a proceeding, and the Panel does not believe the Supplemental Filing

contained information or arguments that the Complainant could not have included

when it filed the Complaint.

4. Factual Background

The Respondent registered the disputed domain name, <netdeposit.com>,

on April 27, 1998, and renewed the registration on February 27, 2003.

The Complainant began registering a series of trademarks using the name "NetDeposit"

in mid-2001.

During April and May 2003, the Complainant and the Respondent discussed at

what price the Respondent might be willing to sell the disputed domain name

to the Complainant. They did not however come to an agreement.

5. Parties’ Contentions

A. Complainant

- The disputed domain name is identical or confusingly similar to four registered

trademarks of the Complainant.

- The disputed domain name is also identical or confusingly similar to the

Complainant’s company name, NetDeposit, Inc.

- Despite owning the disputed domain name for five years, the Respondent has

not developed or used the domain name for any personal or business purpose.

- The Respondent is not known by the disputed domain name and does not have

any business that is known by it.

- The domain name has been registered by the Respondent for over five years

with no commercial use being made of the name. This shows bad faith in acquiring

and holding a domain name for an extended period with no indication of any intention

to use it for any demonstrable legitimate purpose.

- The disputed domain name should be transferred to the Complainant.

B. Respondent

- The Complainant is not the owner of the trademarks in the Complaint. A Complaint

must be dismissed where the Complainant is not the trademark holder.

- Complainant does not allege any other trademark rights aside from the registered

marks, but attempts to rely on its <net-deposit.com> domain name, registered

September 27, 2002, subsequent to the registration of the disputed

domain name. However, domain names, in and of themselves, do not provide trademark

rights under the Policy.

- Complainant also relies on its company name, but company names do not provide

trademark rights under the Policy, either.

- Complainant has no enforceable trademarks in any event because none of its

trademarks predate the registration of the disputed domain name.

- It is well-established that intent to use a domain name for a business plan

which has yet to launch establishes the Respondent’s legitimate interest.

- Respondent also has a legitimate interest because the disputed domain name,

<netdeposit.com>, is a descriptive term composed of common words, and

Respondent was the first to register it.

- Respondent’s plan to use the disputed domain name proves that the Respondent

registered the domain name in good faith.

- The Complaint should be denied.

- The Panel should issue a finding of Reverse Domain Name Hijacking because

the Complainant knew there was no plausible basis for this Complaint.

6. Discussion and Findings

In order for the Complainant to obtain transfer of the disputed domain name,

it must prove the following (the Policy, paragraphs 4(a)(i) through (iii)):

- the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the disputed

domain name; and

- the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown that it has two trademark registrations for the name

"NetDeposit" on the Principal Register of the United States Patent

and Trademark Office. They are Nos. 2644495 dated October 29, 2002;

and 2576673 registered on June 4, 2002. Both registrations are for

computer hardware and software for financial services, and both claim a first

use date of June 19, 2001.

The Respondent has claimed that the Complainant is not the registrant for the

registered "NETDEPOSIT" trademarks. However, the circumstances of

this Case indicate to the Panel that the Complainant controls the entity that

registered the "NETDEPOSIT" service marks. The Panel does not believe

the Complainant used legal counsel in filing the Complaint, and thus deserves

sufficient latitude to present its case in layman’s terms.

The disputed domain name, <netdeposit.com>, is identical to the trademark

"NETDEPOSIT" presented by the Complainant. The Panel thus finds the

Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

The Complainant contends the Respondent does not have legitimate rights or

interests in the disputed domain name because it has kept the name registered

for some five years but has failed to use the name during that time.

The Respondent attempts to counter the Complainant’s contention by asserting

that it has made demonstrable preparations to use the disputed domain as provided

under the Policy at paragraph 4(c)(i). The Respondent’s "demonstrable preparations"

consist of its principal’s affidavit that he has been planning to use the disputed

domain name for an on-line foreign exchange operation, but that he has been

delayed owing to the departure of one erstwhile collaborator and the death of

another. The Panel does not believe the affidavit of one of the parties, or

of a third person closely connected with one of the parties, proves very much.

The Respondent is ably represented by counsel, and the Panel believes that more

varied and substantial proof of Respondent’s preparations—if such proof existed—could

easily have been produced for this proceeding.

The Respondent also attempts to argue that the words "net deposit"

or "netdeposit" are descriptive and thus the public is free to make

use of them on a first-come first-served basis. The Panel does not believe this

is true; the Respondent supplies no lexicographical authority for this argument,

and the Panel does not believe the Complainant would have obtained its "NetDeposit"

United States trademark registrations if this were true in the United States,

where both the Complainant and the Respondent are located.

The Panel therefore finds the Respondent has not satisfied the Policy at paragraph 4(c)(i),

and that it does not have legitimate rights and interests in the disputed domain

name.

C. Registered and Used in Bad Faith

The Panel would like to reiterate that the Policy at paragraph 4(a)(iii) requires

that the Complainant show that the Respondent both registered and is using the

disputed domain name in bad faith. The Respondent registered the disputed domain

name on April 27, 1998. The Complainant claims a first use of its

trademarks in June 2001, a gap of over three years. Thus the Panel finds

the Respondent could not have registered the disputed domain name in bad faith

since the Complainant’s trademarks did not exist at the time. (see John Ode

d/b/a ODE and ODE-Optimum Digital Enterprises v. Internship Limited, WIPO

Case No. D2001-0074 (May 1, 2001), where the panel wrote: "There

are ample authorities supporting the view that a trademark that did not exist

at the time the disputed domain name was registered cannot serve as the basis

for a claim under the ICANN Policy, since it is impossible for the domain name

to have been registered in bad faith ….Our view is that Complainant has not

proved bad faith registration, and we have decided the case principally on that

basis. We further find that the complaint was brought in bad faith, based on

the fact that Complainant knew when he filed the complaint that the registration

of the disputed domain name predated his own trademark rights." See also

Open VBW Kulturmanagement & Veranstaltungs GmbH v. Ohanessian M.,

WIPO Case No. D2000-0675 (October 18, 2000);

and Sealstore.com L.L.C. v. Sealpool Ltd. NAF Case No. FA96535 (March 8, 2001).

While there may be some very narrow instances in which registration in bad faith

can be found even when the domain name was registered before the Complainant

acquired trademarks, no such exception applies in the present case. See ExecuJet

Holdings Ltd. V Air Alpha America, Inc., WIPO

Case No. D2002-0669 (October 7, 2002).

The Complainant argues that its trademark registrations did exist when the

Respondent renewed its registration on February 27, 2003. However,

the Panel does not believe that a domain name registrant, even at the time of

renewal, should be subject to trademark rights that were created after the registrant’s

initial domain name registration. It would be a heavy burden on domain name

registrants if, at every renewal, they had to scour the Internet and trademark

registries to see whether, in the interim, a trademark identical or similar

had been created.

D. Reverse Domain Name Hijacking

The Respondent contends the Complainant brought this Complaint to harass the

Respondent because it refused to sell the disputed domain name to the Complainant

for the Complainant’s high offer of US$100. The Panel agrees with the contention.

As the Respondent points out, there are many, many previous cases where panels

have found there was bad faith in filing a Complaint under the Policy when the

Respondent’s domain name registration preceded the Complainant’s creation of

its trademark rights. Per paragraph 15(e) of the Rules, the Panel finds this

Complaint was brought in bad faith and constitutes an abuse of Policy proceedings.

7. Decision

The Panel finds that the disputed domain name, <netdeposit.com>, is identical

to a trademark in which the Complainant has rights. The Respondent has failed

to show preparations to use the domain name sufficient to establish legitimate

rights and interests. But the Complainant was unable to show the disputed domain

name was registered in bad faith because the Respondent’s registration occurred

three years before the Complainant acquired its trademark rights. Finally, the

Panel finds the Complaint was brought primarily to harass the Respondent and

constitutes an abuse of Policy proceedings.

For the foregoing reasons, the Complaint is denied.

Dennis A. Foster

Presiding Panelist

Maxim H. Waldbaum

Panelist

David E. Sorkin

Panelist

Dated: July 22, 2003