WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SmartTix Entertainment Services, Inc. v. Anand Karunakaran/IconnectU, LLC (private domain holder) and 1 & 1 Internet, Inc. (domain registrant/proxy)
Case No. D2007-0966
1. The Parties
Complainant is SmartTix Entertainment Services, Inc., New York, New York, United States of America, represented by the law firm Power Del Valle LLP, United States of America.
Respondents are Anand Karunakaran/IconnectU, LLC (private domain holder) and 1 & 1 Internet, Inc. (domain registrant/proxy), Alexandria, Virginia, United States of America, represented by Duy Thai, United States of America.
2. The Domain Name and Registrar
The disputed domain name <smartix.com> is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2007. On July 4, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On July 5, 2007, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 10, 2007. The Center verified that the Complaint together with the amendment to 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 July 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2007. The Response was filed with the Center on August 1, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 28, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On August 18, 2007, Complainant filed with the Center a “Motion for Leave to Reply” and a proposed Reply. Two days later Respondent filed a Motion for Leave to Submit an answering declaration. The Center referred both motions to the Panel. In Procedural Order No. 1, dated August 29, 2007, the Panel granted Complainant’s request in part, denied that request in part, and granted Respondent’s motion.1
The Panel’s order on these motions is annexed as an Appendix to this decision, in the hope that parties in future proceedings will heed the Rules’ requirement of a single pleading per party and limit applications for “replies” or other unauthorized filings to truly exceptional circumstances. In this matter, as usually is the case, at least in this Panelist’s experience, neither party’s supplemental material was necessary to the Panel’s decision, and Complainant’s proposed submission consisted largely of a re-assertion of arguments previously advanced in the Complaint. Counsel in Policy proceedings would better serve their clients by leaving requests for supplemental filings to the Panel, as the Rules (paragraph 12) contemplate.
4. Factual Background
Complainant is a New York City-based corporation and operates a ticketing service under the name SmartTix, primarily on the Internet at “www.smarttix.com”. Complainant began this business in 1998, and has operated it continuously since then. Complainant has a service mark for SMARTTIX that was registered on the principal register of the United States Patent and Trademark Office (USPTO) in November 2006, based upon an application filed in April 2004 that claimed a first use in commerce of October 1998.
Respondent IconnectU, a provider of Internet hosting services, registered the disputed domain name in January 1999. In the eight years since registering the disputed domain name, IconnectU has posted a single page on the website, with the name smartix.com. At some point this content was withdrawn and the disputed domain name resolved to “this website cannot be found.” Annexed to the Complaint is a screen shot of the disputed domain name on an unidentified date showing a single page entitled “IP Switch Web messaging,” and the asking for a user name and password.
Complainant or its counsel wrote to Respondent on four occasions, in April 2004, June 2004, January 2005, and November 2006, each time complaining of Respondent’s ownership of the disputed domain name and requesting a transfer. Respondent replied (through counsel) only to the January 2005 letter, pointing out that Respondent had made no commercial use of the disputed domain name and asserting that Complainant had no basis for action against Respondent under trademark law or the Policy.
Shortly after the fourth letter from Complainant, Respondent transferred the disputed domain name to a private registration maintained by Respondent 1 & 1 Internet, and changed its registration from a United States of America-based registrar to the current registrar, which is based in Germany.
5. Parties’ Contentions
A. Complainant. Complainant contends as follows:
The disputed domain name differs from Complainant’s federally-registered service mark by deletion of a single letter, the first “t” in “SmartTix.” Such a slight but obvious misspelling of Complainant’s mark is typosquatting and in any event the disputed domain name is confusingly similar to Complainant’s protected service mark.
Respondent has never been known by the disputed domain name, has never used the disputed domain name in connection with a bona fide offering of goods or services, and has never made legitimate non-commercial or fair use of it. Respondent cannot hide behind any alleged legitimate use by Mr. Khuller (discussed under Respondent’s contentions below); the Policy requires Respondent to demonstrate rights or legitimate interest, not those of a third person.
By registering the disputed domain name, with its obvious misspelling of Complainant’s mark, after Complainant’s first use of its service mark in commerce, Respondent’s registration was “in bad faith and with the knowledge that the domain name would be likely to receive misdirected traffic intended for Complainant’s well-known ticketing agency.” The similarity of the disputed domain name to Complainant’s distinctive mark itself demonstrates registration in bad faith. Because Respondent registered the disputed domain name after Complainant “had registered its domain and operated a ticket agency on line” is charged with the knowledge of Complainant and its mark. To quote from the Complainant, “it would be wholly incredible for IconnectU to claim that, in searching for the availability of and registering the [disputed domain name], it was completely ignorant of Complainant’s registration and commercial use.” Bad faith in use is shown by eight years of non-use and Respondent’s failure to respond to or comply with Complainant’s cease-and-desist letters.
B. Respondent. Respondent contends as follows:
The disputed domain name is not confusingly similar to Complainant’s service mark; the latter depends upon the capitalized S and T (SmartTix).
Respondent IconnectU is owned by Anand Karunakaran, who registered the disputed domain name in January 1999 for the benefit of his colleague, an individual named Vivek Khuller. At that time Mr. Khuller was a chief executive officer of a telecommunications company and prepared a business plan for an electronic event-access system using the name smartix for this program. In support of this allegation Respondent has submitted a copy of a Harvard Business School case study of that business plan under that name, and as noted the Panel permitted Respondent to submit a declaration of Mr. Khuller that confirms this contention. Mr. Khuller therefore comes within paragraph 4(c)(ii) of the Policy, having been known by the smartix name commercially before registration of the disputed domain name.
Respondent registered the disputed domain name five years before Complainant’s trademark application and seven years before the mark was registered. There is no evidence that Respondent or Mr. Khuller knew of Complainant when the disputed domain name was registered in 1999. Respondent has never interfered with Complainant’s business by means of the website maintained at the disputed domain name or otherwise. Respondent never posted any content on the disputed domain name that would create confusion in the public. Respondent changed his registration details to a private service solely to block contact information from spammers, a common reason for using private proxy registration. The email page described in the Complaint was available only for a very brief period, when Respondent switched servers, and was immediately withdrawn.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must establish each of the following:
(1) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants has rights; and
(2) that the Respondents have no rights or legitimate interest in respect to the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
Under paragraph 4(a)(iii) of the Policy both registration and use of the disputed domain name must be proven. E.g., Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0427; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338. The Policy requirements are conjunctive, and Complainant bears the burden of proof on each. Failure to satisfy any of these essential Policy elements results in a denial of the Complainant. Because Complainant has failed to carry its burden of proof that Respondent registered the disputed domain name in bad faith, the Panel need not consider the other Policy elements.
Complainant offers no proof of its counsel’s allegation that registration was with “the knowledge that the domain name would be likely to receive misdirected traffic intended for Complainant’s well-known ticketing agency.” Such an allegation of the Complainant’s desired legal conclusion is not evidence. There is no factual showing of facts from which the Panel might reasonably infer that Respondent or Mr. Khuller knew of Complainant’s mark or business at all when IconnectU registered the disputed domain name. The principal case cited by Complainant in support of this contention, Paula Ka v. Paula Korenek, WIPO Case No. D2003-0453, is readily distinguishable on its facts. In that proceeding respondent admitted knowledge of Complainant and its mark at the time she registered the disputed domain name.
Complainant instead relies entirely on the doctrine of constructive notice that can be applied under United States of America trademark law. Under that doctrine, in most circumstances a resident of the United States is presumed to have knowledge of all federally-registered trademarks, effective sometimes as of the first use of each such mark in commerce or sometimes as of the registration date. For reasons well illustrated by the facts in this proceeding, panelists under the Policy rarely apply the constructive notice doctrine, requiring instead that complainant provide evidence that respondent actually knew of complainant and its mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 3.4. The rare exceptions to this consensus view have almost always involved an evidentiary showing to establish facts from which the Panel could infer that respondent’s knowledge was likely, or that respondent intentionally turned a blind eye to the trademark rights of others.2
There is no such evidence here. The only evidence is Mr. Khuller’s declaration that he asked his friend to purchase and hold the disputed domain name for him. Mr. Khuller’s sworn statements are corroborated in material part by contemporaneous evidence from a third party, the Harvard Business School case study.3
Respondent registered the disputed domain name more than five years before Complainant applied for its trademark. Had he searched the USPTO database before registering the disputed domain name, he would have found no reference to Complainant or its present mark. See Overview, paragraph 3.1 (“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”). There is no other evidence that Respondent knew of Complainant or its mark at that time. In these circumstances Respondent’s nonuse of the disputed domain name cannot provide the necessary evidence of registration in bad faith.4
The record before the Panel contains none of the usual indicia of cybersquatting, the limited class of cases that the Policy was enacted to combat. There has been no commercial use, ever, of the disputed domain name. Respondent never sought to sell the disputed domain name to Complainant or anyone else. Neither Respondent nor Mr. Khuller has ever competed with Complainant. Neither appears to have been a target of any other mark owner in a Policy proceeding. There is nothing to indicate that Respondent or Mr. Khuller took advantage of any goodwill in Complainant’s mark. Complainant has failed to carry its burden of proof under paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: September 5, 2007
APPENDIX
SmartTix Entertainment Services, Inc. v. Anand Karunakaran/IconnectU, LLC (private domain holder), 1 & 1 Internet, Inc. (domain registrant/proxy)
Case No. D2007-0966
PROCEDURAL ORDER No. 1
On August 18, 2007, seventeen days after service and filing of the Response, Complainant filed with the WIPO Arbitration and Mediation Center a “Motion for Leave to Reply” and a proposed Reply. Two days later Respondent filed a Motion for Leave to Submit an answering declaration.
The Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraphs 3 and 5, call for a single submission by each party. Paragraph 12 of the Rules authorizes “statements or documents from either of the Parties” only upon request of the Panel. Nevertheless a practice has arisen in proceedings under the Uniform Dispute Resolution Policy for a party wishing to make an additional submission (usually the complainant) or out-of-time filing (usually the respondent) to request the panel’s permission to do so. This practice has occurred often enough to justify mention in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2 (“Can a panel accept an unsolicited supplemental filing?”). The undersigned subscribes to the “Majority View” in the Overview, that a panel has “discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case.” See Rules, paragraph 10(b).
I subscribe to that view with two reservations, however. First, I believe that supplemental filings should be the rare exception and justified by the same level of “exceptional circumstances” the Rules (paragraph 14(a)) demand for an out-of-time-filing. Second, any supplemental filing should be strictly limited to the circumstances justifying that filing, without any extraneous matter.
There is one matter in the Response that Complainant perhaps could not have anticipated. Respondent asserts that one Vivek Kuller is a business associate of Respondent, and then proceeds to describe a purported legitimate interest of Mr. Kuller and Respondent in the disputed domain name. In paragraphs 2 and 4 the proposed Reply Complainant asserts that this assertion is unverified, and advances some legal argument about why the Panel should disregard it. The other eight paragraphs of the Reply are reassertion of arguments made in the Complaint.
My second reservation above has prompted me, in making panel requests for additional information, to adopt one of two remedies: either to warn the parties that inclusion of additional information or reargument of matters set forth in a party’s initial submission is grounds to disallow the entire filing, see Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635 (Procedural Order attached as appendix), or simply to disallow portions of supplemental filings that are not responsive to the panel’s request, see Edward G. Linskey Jr. v. Brian Valentine, WIPO Case No. D2006-0706, footnote 3.
In this proceeding, not without some misgivings, I have decided to adopt the latter approach. Leave to submit the Reply is GRANTED as to paragraphs 2 and 4 and DENIED as to the remainder. Following the Majority View in the Overview, leave to submit the answering declaration is GRANTED.
Richard G. Lyon
Sole Panelist
Dated: August 29, 2007
1 In its motion for leave to file the answering declaration, Respondent asserts that he had not submitted the declaration earlier “because he had relied on the response’s certification of completeness and accuracy as being sufficient and appropriate” as to the factual matters asserted in his pleading. The undersigned Panelist has frequently expressed his views that allegations of counsel are not evidence and inappropriate circumstances may be completely ignored by the Panel. The Policy and the Rules call for “evidence” and when a party relies upon a factual matter proof such as testimony under oath is appropriate and perhaps even necessary. That is particularly true when a party’s representative rather than the party himself makes the certification to which Respondent’s counsel refers. The Panel recognizes, however, that this is not a universally-held view, and therefore excuses the failure to submit such corroborating evidence with the Response.
2 For a nonexclusive list of how such facts may be proven, see Net2phone Inc v. Delta Three Inc., WIPO Case No. D2007-0644, fn. 5-11 and accompanying text.
3 Note that the Panel refers to Mr. Khuller’s declaration only in the context of registration in bad faith under paragraph 4(a)(iii) of the Policy, and makes no finding of whether a principal’s legitimate interest under paragraph 4(c)(ii) may be vicariously asserted by an agent or representative who is the registrant. While an interesting issue in these days of privacy services and proxy registrations, that matter need not be decided to resolve this proceeding. For the same reason the Panel does not address whether use of a privacy service or changing registrars is evidence of use in bad faith.
4 This is not a typosquatting case; typosquatting requires an intention misspelling of a known mark. Almost all typosquatting cases involve commercial activity or some active use that takes advantage of the complainant’s mark.