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WIPO Domain Name Dispute Case

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WIPO Domain Name Dispute Case Powered By Docstoc
					                WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

           Atlantic Technology Enterprises, Inc. v. Stelor Productions, LLC

                                   Case No. D2009-0197




1.   The Parties

     Complainant is Atlantic Technology Enterprises, Inc. of Newton, New Jersey,
     United States of America, represented by McCarter & English, LLP, of United States.

     Respondent is Stelor Productions, LLC, of Montgomery Village, Maryland,
     United States of America, represented internally.


2.   The Domain Name and Registrar

     The disputed domain name <safetinet.org> (the “Disputed Domain Name”) is
     registered with GoDaddy.com, Inc.


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center
     (the “Center”) on February 13, 2009. On February 16, 2009, the Center transmitted by
     e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the
     Disputed Domain Name. On February 16, 2009, GoDaddy.com, Inc. transmitted by
     e-mail to the Center its verification response confirming that Respondent is listed as the
     registrant and providing the contact details. The Center verified that the Complaint
     satisfied the formal requirements of the Uniform Domain Name Dispute Resolution
     Policy (the “Policy” or “UDRP”), 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
     Respondent of the Complaint, and the proceedings commenced on February 19, 2009.
     In accordance with the Rules, paragraph 5(a), the due date for Response was
     March 11, 2009. The Response was filed with the Center on March 11, 2009.




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     The Center appointed Douglas M. Isenberg as the sole panelist in this matter on
     March 17, 2009. The Panel finds that it was properly constituted. 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.


4.   Factual Background

     Complainant states that it “offers a wide variety of Internet and telecommunication
     solutions and merchant account services to businesses and consumers” and that one of
     its “signature products” is “a managed network solution” known as SAFETiNET,
     which Complainant states it has used as a trademark since at least 2004 and which it
     registered as an alternate trade name for itself in the State of New Jersey. (Evidence
     provided by Complainant shows that it filed for this name on March 21, 2007.)
     Complainant further states that it uses the domain name <safetinet.com> as part of its
     “primary URL for its website devoted to advertising and promoting the SAFETiNET
     products”. The Panel’s review of the WhoIs database shows that the domain name
     <safetinet.com> was registered on July 3, 2004, and Complainant states that it has used
     this domain name in connection with its SAFETiNET products “since 2004”.

     The Disputed Domain Name was registered on August 8, 2005.

     Complainant states that “Respondent makes no affirmative use of the domain”, and
     Respondent states that it “concedes that at present the Disputed Domain Name resolves
     to an inactive website”. The Panel’s review of the website at “www.safetinet.org”
     indicates that it is a monetized parking page that contains links relating, inter alia, to
     automobile window-tinting.


5.   Parties’ Contentions

     A.    Complainant

     Complainant contends, in relevant part, as follows:

     -     The Disputed Domain Name is identical or confusingly similar to a trademark or
           service mark in which the Complainant has rights because (a) Complainant has
           acquired secondary meaning in the SAFETiNET mark through “substantial
           promotional efforts” including USD25,000 on advertising and promotions, its
           website using the domain name <safetinet.com> and its participation in various
           trade shows and exhibitions, which have generated USD344,000 in sales and (b)
           the Disputed Domain Name “wholly incorporates the SAFETiNET mark, adding
           only the generic top-level domain”.

     -     Respondent has no rights or legitimate interests in respect of the Disputed
           Domain Name because “there is no evidence of the Respondent’s use of, or
           demonstrable preparations to use, the domain name <safetinet.org> or a name
           corresponding to the domain name <safetinet.org> in connection with a bona fide
           offering of goods or services”; and “Respondent has never been known either by
           the name “SAFETINET” or the domain name <safetinet.org>”.

     -     The Disputed Domain Name was registered and is being used in bad faith
           because Respondent “had apparent knowledge of [Complainant’s] SAFETiNET

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          mark at the time of registration” because Complainant began using the mark
          in 2004 and because Respondent is a “sophisticated domainer” with a portfolio of
          more than 200 domain names; and “Respondent makes no affirmative use of the
          domain”.

     B.   Respondent

     Respondent contends, in relevant part, as follows:

     -    Complainant does not have rights in the mark SAFETiNET because the mark “is
          a generic name that consists of common words” and “Complainant has failed to
          provide compelling evidence to establish secondary meaning”.

     -    Respondent has rights or legitimate interests in the Disputed Domain Name
          because “Respondent has developed patent pending technology to ensure the
          child’s safety on the internet” and “by registering the domain name
          <safetinet.org> only intended to participate in the community of educating
          parents and children on safety on the Internet and providing them the opportunity
          to avail themselves of the new technology that the Respondent has developed”.

     -    The Disputed Domain Name has not been registered and is not being used in bad
          faith because “Respondent has not attempted to sell the domain name to the
          Complainant, nor used the domain name as a means of creating a likelihood of
          confusion with the Complainant’s mark as to the source, sponsorship or
          endorsement of the Respondent’s business, products or service” and “Respondent
          has a genuine intention of using the domain name <safetinet.org> with the
          company’s products and services”.


6.   Discussion and Findings

     Pursuant to the Policy, Complainant is required to prove the presence of each of the
     following three elements to obtain the relief it has requested: (i) the Disputed Domain
     Name is identical or confusingly similar to a trademark or service mark in which the
     Complainant has rights; and (ii) Respondent has no rights or legitimate interests in
     respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been
     registered and is being used in bad faith. Policy, paragraph 4(a).

     A.   Identical or Confusingly Similar

     “A fundamental principle of trademark law is that rights in a trademark can be acquired
     through use, and such rights exist even though the trademark may not be registered.”
     Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575 (finding
     common-law trademark rights where “Complainant has provided evidence to the effect
     that he has been using the mark… in association with its business for a number of years
     prior to the Domain Name being registered”). To establish common-law trademark
     rights for purposes of the Policy, a Complainant can provide, among other things, press
     releases, newsletters and website printouts showing use of the relevant mark for a
     period of several years. Imperial College v. Christophe Dessimoz,
     WIPO Case No. D2004-0322. See also WIPO Overview of WIPO Panel Views on
     Selected UDRP Questions, paragraph 1.7, and GB Investments, Inc. v. Donald Baker,
     WIPO Case No. D2007-1320 (finding common-law trademark rights based on
     “continuous use” of the mark for eight years, “extensive promotion” under the mark
     and Complainant’s “widespread recognition”).

                                           page 3
In this case, Complainant states that it has used the SAFETiNET trademark for
approximately five years, that it obtained a state name registration for the mark nearly
two years ago, and that it has spent USD 25,000 advertising and promoting the
trademark through publications and trade shows. These statements are supported by a
declaration signed by Complainant’s president. Accordingly, for purposes of this
dispute under the Policy the Panel is prepared to accept Complainant’s argument that it
has acquired rights in the SAFETiNET trademark.

Therefore, the remaining question under this element of the Policy is whether the
Disputed Domain Name is identical or confusingly similar to the SAFETiNET
trademark. In answering this question, the relevant comparison to be made is with the
second-level portion of the Disputed Domain Name (i.e., “safetinet”), as it is
well-established that the top-level domain name (i.e., “.org”) should typically be
disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises
Unlimited, NAF Claim No.95491 (“[N]either the beginning of the URL (http://www.),
nor the TLD (.com) have any source indicating significance. Those designations are
merely devices that every Internet site provider must use as part of its address”); see
also United States Patent and Trademark Office’s Trademark Manual of Examination
Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor
the TLD have any source-indicating significance”).

The second-level portion of the Disputed Domain Name, in this case “safetinet”, is
clearly identical to the SAFETiNET trademark, so no further discussion is necessary.
Accordingly, the Panel is convinced that Complainant has proven the first element of
the Policy.

B.    Rights or Legitimate Interests

In support of its assertions that it intends to use the Disputed Domain Name in
connection with its “patent pending technology” to help parents protect children on the
Internet, Respondent has provided as an exhibit a copy of an application filed pursuant
to the Patent Cooperation Treaty, International Application No. PCT/US2006/022832.
This application identifies the applicant as “Stelor Productions, LLC” and the filing
date as June 13, 2006. The application claims, among other things, “[a] method for
establishing a security code” and “[a] system for use in controlling access to a
resource”. While an examination of the patentability of this method and system are
beyond the scope of this decision, the Panel finds credible Respondent’s assertion that
this method and system may relate to a technology for helping parents protect children
on the Internet, and the Panel has no basis on which to reject Respondent’s statements
that it intends to use the Disputed Domain Name in connection therewith. Accordingly,
Respondent has provided evidence of “demonstrable preparations to use [the Disputed
Domain Name] in connection with a bona fide offering of goods or services” that is,
rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy.

Accordingly, Complainant has not demonstrated that Respondent lacks rights or
legitimate interests in the Disputed Domain Name for purposes of the Policy.

C.    Registered and Used in Bad Faith

Where a complainant does not prove one or more of these elements, a panel is
compelled to issue a decision denying the complaint, regardless of the complainant’s
ability to prove the other element(s) required by the Policy. Accordingly, under such
circumstances, any discussion by the panel with respect to such other element(s) would
be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex

                                       page 4
     Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must
     prove all three elements of the Policy, and since the Complainant fails under the third
     element, it is not necessary to make a finding under the second element of the Policy”);
     Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the
     complainant failed to prove the second element of the Policy, “there is no need for the
     Panel to address the third element of the Policy”). Therefore, given that the Panel in
     the instant case finds, as discussed above, that Complainant has failed to prove the
     second element of the Policy that is, paragraph 4(a)(ii) the Panel makes no findings
     with respect to the third element of the Policy.


7.   Decision

     For all the foregoing reasons, the Complaint is denied.




                                   Douglas M. Isenberg
                                      Sole Panelist

                                  Dated: March 31, 2009




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