WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM

Case No. D2006-0905

1. The Parties

The Complainant is Proto Software, Inc., New York, New York, United States of America, represented by Byron Binkley, United States of America.

The Respondent is Vertical Axis, Inc/PROTO.COM, Pungdeokcheon2-dong, Yongin-si, Gyeonggi-do, Republic of Korea, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <proto.com> is registered with Nameview Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2006. On July 18, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On July 18, 2006, Nameview Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint 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 the proceedings commenced on August 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2006. The Response was filed with the Center on September 9, 2006.

The Center appointed Alistair Payne, James Carmody and David E. Sorkin as panelists in this matter on September 25, 2006. 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.

4. Factual Background

The Complainant is the registered owner of the United States trademark “PROTO”. The application to register this trademark was made by the Complainant on August 6, 2004, and the trademark was registered on May 23, 2006. The Complainant alleges first use of the mark on December 1, 2005. The Complainant is a developer and vendor of software products “Proto Financial” and “Proto Viewer” and has been marketing and selling software under these names since 2005. In addition, the Complainant maintains a website under the domain name <protosw.com>.

The Respondents registered the disputed domain name <proto.com> on June 24, 2001. There is no evidence provided that the domain name is or was ever used by the Respondent. There is evidence to suggest that the Respondent maintains a large portfolio of domain names.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Respondent’s domain name is identical to their trademark. They base this on the fact that they have been trading on their registered mark since December 1, 2005, and using the word proto in the course of their marketing and selling activities.

The Complainant also submits that the Respondent has no rights and legitimate interests in the domain name <proto.com> as is determined under paragraph 4(a)(ii) of the Policy. This assertion is based on evidence of the fact that there is no publicly viewable evidence of an operating website or other service at “www.proto.com”. There is no evidence of any use of the domain name found when a search of the Internet is undertaken. The Respondent’s personal and business information is concealed through the use of the WhoIs Identity Shield and there is no evidence that the Respondent has been commonly known as “Proto” or any other variant of this name.

Finally, the Complainant alleges that the domain name <proto.com> was registered and is being used by the Respondent in bad faith. The submission is based on the suggestion that a pattern of bad faith arises from the following circumstances:

- The Respondent has taken steps to conceal its identity by availing itself of the WhoIs Identity Shield;

- The Respondent registered the domain with Nameview, which bills its services “management solutions for large domain name portfolio owners, typically porfolios with over 500 domain names”;

- Use of a domain name portfolio management services combined with a lack of use of the actual domain establishes evidence of a pattern of intent to sell, rent, or transfer the domain to a party with interest in it at a rate that materially exceeds Respondent’s out-of-pocket expenses incurred in the registration and management;

- The Respondent did not reply to good faith inquiries regarding plans for usage of the domain;

- The Complainant’s trademark has a strong reputation and is known in the industry in which it operates;

- The Respondent has been guilty of “passive holding” of the domain name and as such is guilty of using the domain name in bad faith. This is based on the Complainant’s assertion that they made regular checks on the domain name since 2004 and this revealed no use of the name for the purposes of offering any goods or services.

B. Respondent

Respondent contends that ‘proto’ is a common descriptive term and as such, may be registered by anyone who has a legitimate interest and that the Respondent could not have registered the domain name in bad faith, since at the time of registration, the Respondent was unaware of Complainant’s business and that at that time Complainant had not applied for a registered trademark. Respondent also contends that Complainant has engaged in reverse domain name hijacking, since Complainant did not apply for registration of the mark for three years after Respondent had registered the domain name at issue.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to the trademark; and

(ii) The respondent has no right or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In view of the Panel’s fundamental finding below that the Complainant fails under Section 4 (a) (iii) there is no requirement for it to decide whether the domain name is in fact identical or confusingly similar to the trademark at this time.

B. Rights or Legitimate Interests

The Panel does not consider that a decision based on paragraph 4(a)(ii) is required as the Complainant fails under paragraph 4(a)(iii) for the reasons provided below. Accordingly it is unnecessary for us to express a view on the issue of the Complainant’s rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In the Panel’s unanimous view the Complainant in this case cannot demonstrate bad faith registration of the disputed domain name. The disputed domain name was registered approximately 3 years prior to the application for registration of the Complainant’s trademark, and more than 4 years prior to the Complainant’s first use in commerce. Without evidence of special circumstances (for example, of the Respondent being aware of the Complainant’s potential rights or interests) the Complainant cannot establish any of the individual circumstances listed in paragraph 4(b)(i), (ii) or (iii) of the Policy or otherwise demonstrate registration in bad faith. It is well established by previous Panels that this section of the Policy requires a demonstration of both registration and use in bad faith. Even if it was possible to infer “use” in bad faith (which the Panel declines to make a finding on in this case) this limb of the Policy would not be satisfied and the Complainant’s case would fail. The Panel notes the prior consistent decisions in John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; and PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182.

D. Reverse Domain Name Hijacking

A finding of Reverse Domain Name Hijacking may be made if “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith, see Futureworld Consultancy Opty Ltd. v. Online Advice, WIPO Case No. D2003-0297.

Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name”. The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking, see Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001. Allegations of reverse domain name hijacking have been upheld in circumstances where the registration date of the domain name at issue preceeded the dates of the complainant’s trademark registration, see Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202; and Carsales.com.au v. Flanders, WIPO Case No. D2004-0047.

The Panel considers that the Complainant is represented by Counsel who even on a rudimentary examination of the Policy and its’ application in this area should have appreciated that the Complaint could not succeed where the Respondent’s domain name had been registered three years prior to filing a trademark application or actual use of the mark. Based on the Complainant’s own submissions it is clear that it was aware of the Respondent’s domain name since 2004 and prior to the date on which it began using the mark in its sales and marketing activities.

Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably pre-dates any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0535.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be dismissed. The Panel therefore rejects the request for the transfer of the domain name to the Complainant. The Panel also unanimously declares, on the issue of reverse domain name hijacking, that the Complaint has been brought in bad faith and as such is an abuse of the Policy.

Dated: October 10, 2006