WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Interactive Study Systems Inc. v. BFQ

Case No. D2008-0205

1. The Parties

Complainant is Interactive Study Systems Inc., of Clearwater, Florida, United States of America, represented by the law firm Trenam Kemker, United States of America.

Respondent is BFQ, of Friendswood, Texas, United States of America, represented by the law firm Edmonds P.C., United States of America.

2. The Domain Names and Registrar

The disputed domain names <examsavers.com>, <examsavers.net>, and <technologyexam.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2008. On February 12, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On February 13, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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”), 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 February 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2008. The Response was filed with the Center on March 6, 2008.

The Center appointed Richard G. Lyon as the sole panelist in this matter on March 18, 2008. 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 March 27, 2008, Complainant requested leave to submit a reply, with the proposed Reply attached. Pertinent content of the Reply is described in Sections 4-B and 6-B below. Because some of content raises a matter that Complainant arguably could not have anticipated, and so that there is no question that Complainant has been “given a fair opportunity to present its case” (Rules, paragraph 10(b)), the Panel has determined to grant leave to submit the Reply, and will consider the Reply in rendering his decision.

4. Factual Background

A. The evidence submitted by the parties establishes the following facts:

The parties are competitors in the field of study aids to prepare for standardized examinations. At one time Complainant or its principal served as a reseller of Respondent’s products but this relationship terminated in May 2005.

Complainant maintains its principal website at “www.examsaver.com”, which it registered in late 2004, and owns the domain names <examsaver.net> and <technologyexams.com. An Internet user who enters either of the latter two addresses into his browser is redirected automatically to “www.examsaver.com”. Complainant holds no registered trademark for EXAMSAVER (singular or plural) but has applied for one in the United States Patent and Trademark Office (USPTO). Its application was filed in November 2007, based upon a first use in commerce of November 2004, and is now pending. Complainant claims common law trademark rights in TECHNOLOGYEXAMS.COM.

Respondent owns a trademark for TECHNOLOGY EXAMS registered on the Supplemental Register of the USPTO. Respondent applied for this mark in June 2005 based upon a first use in commerce of 1997. Respondent registered the disputed domain names in July 2005. An Internet user accessing any of the disputed domain names is automatically redirected to Respondent’s principal website at “www.financialexams.com”.

B. The parties dispute the nature of the reseller relationship between them.

As an annex to the Response is a conformed copy of a Technology Reseller Agreement between the parties dated October 2004 under which Respondent authorized Complainant to resell Respondent’s “Beachfront Quizzer, Inc.” product line. This agreement was purportedly signed by one Jason Bortz for Complainant.

Complainant’s Reply includes an affidavit from Mr. Bortz, in which he states that he never saw or heard of the Technology Reseller Agreement attached to the Response and never signed or authorized anyone on his behalf to sign any such agreement. In seeking leave to submit the Reply Complainant’s counsel describes this attachment as “fraudulent evidence”. In his affidavit Mr. Bortz states further that he or a company that employed him resold certain of Respondent’s products from some time prior to “early 2003” through May 2005.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Complainant has trademark rights for purposes of the Policy in EXAMSAVER by virtue of its USPTO application. It has common law trademark rights in TECHNOLOGYEXAMS.COM; the sole factual basis for this, from paragraph 18 of the Complaint, is the statement that “[Complainant] uses its technologyexams.com trademark in connection with training and self-study products and services for the information technology industry”. The disputed domain names differ from Complainant’s marks only by Respondent’s use of the plural for the two “examsavers” domain names and the singular for the <techologyexam.com> domain name.

Complainant acknowledges Respondent’s TECHNOLOGY EXAMS registered mark, but argues that “registration on the Supplemental Register is not evidence of ownership, validity, or the exclusive right to use a trademark”, and contends that this registration “is invalid because the Respondent does not use the purported trademark as a trademark, but rather as a merely descriptive phrase of the products and services the Respondent offers for sale on his websites”. Respondent has never been authorized by Complainant to use Complainant’s marks and has never been commonly known by any of the disputed domain names. Use of them to redirect Internet users to Respondent’s principal website is intended misleadingly to divert Complainant’s customers to Respondent’s sites.

Respondent’s registration of the two “examsavers” disputed domain names eight months after Complainant’s registration of its own <examsaver.com> domain name demonstrates registration and use in bad faith, as an attempt to divert customers and perspective customers of Complainant to Respondent’s sites. The sole allegation as to bad faith in the disputed domain name <technologyexam.com> is as follows:

Based on the Respondent’s activities with “examsavers.com” and “examsavers.net”, it is [Complainant’s] position that the Respondent also registered and uses his “[www.]technologyexam.com” domain name primarily for the purpose of disrupting [Complainant’s] business and to intentionally attract, for commercial gain, [I]nternet users to his website by creating a likelihood of confusion with [Complainant’s] trademark as to the source and/or endorsement of the Respondent’s website, “[www.]technologyexam.com” and the advertisement of the products and services offered at that site.

B. Respondent

Respondent contends as follows:

Complainant has no rights in the EXAMSAVER mark, and even if it does Respondent holds “priority and senior rights” over Complainant in that phrase. Respondent submits evidence of its use of the phrase “examsaver” (with one or two other words) for a number of its products as early as 1998 as evidence of its “priority and senior rights”.

Complainant has shown no basis for any trademark rights in TECHNOLOGYEXAM. Respondent has a right to use all of the disputed domain names. At one time it owned the domain name <www.technologyexams.com> (now owned by Complainant), but Complainant misappropriated it. In support of this charge Respondent submits two pieces of evidence: (a) archived pages from the Wayback Machine at “www.archive.org” showing use of that domain name for promotion of Respondent’s products in 2004, and (b) the Technology Reseller Agreement, which states expressly “[Respondent] will host the website domain www.technologyexams.com and will make appropriate changes requested by [Complainant]”, and “[Complainant] understands and agrees that the websites . . . are the property of [Respondent]”.

Because it has used the phrases incorporated into the disputed domain names for its products and its website prior to the commencement of this dispute, as set forth above, Respondent did not register and is not using them in bad faith.

Complainant’s knowledge of Respondent and its products, as demonstrated by the Reseller Agreement and the Complaint’s acknowledgment of Respondent’s USPTO-registered mark, are evidence that Complainant has used the Policy in bad faith and abused this administrative proceeding. Respondent therefore requests the Panel to make a finding to this effect and a finding that the Complaint is an attempt at reverse domain name hijacking, and to “issue a decision that Complainant’s domain name[s] [www.examsavers.com, www.examsaver.net, www.technologyexams.com] be transferred to Respondent”.

6. Discussion and Findings

A. <technologyexam.com>

The Complaint must be denied as to this domain name for two elementary reasons.

First, Complainant has submitted not a shred of evidence to support its allegation of common law rights in the phrase TECHNOLOGYEXAM. For common law rights to suffice under paragraph 4(a)(i) of the Policy a complainant must show that it has used the word or phrase as an identifier of its goods or services. All Complainant here has offered is its counsel’s unsupported statement to that effect. “The Policy requires the Complainant to prove each of the three elements”, Western Research 3000, Inc. v. NEP Products, Inc. WIPO Case No. D2004-0755 (citing Policy, paragraph 4; emphasis in original), and such proof if it exists is readily available to Complainant. Brooke Bollea a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.

Second, Complainant expressly acknowledges in the Complaint that Respondent holds a USPTO-registered trademark for TECHNOLOGYEXAMS, perforce an acknowledgment that prior to commencement of this dispute Respondent has used this phrase to identify its goods and services. As such, the face of the Complaint provides Respondent a defense under paragraph 4(c)(ii) of the Policy. Whatever limitations registration on the Supplemental Register may place on Respondent under United States of America trademark law (or under the Policy should Respondent commence a proceeding against another’s use of this phrase), there is no question that Respondent has “been commonly known by” that term or that Complainant (a former reseller) was well aware of that fact. Paragraph 4(c)(ii) expressly provides that its safe harbor is available even if a respondent “ha[s] acquired no trademark or service mark rights” in it.

B. <examsavers.com>; <examsavers.net>

The same result obtains for these two domain names, but for somewhat different reasons.

Complainant has shown that it holds rights in EXAMSAVER by reason of its use of the mark in commerce for several years, as demonstrated by its USPTO application. While the application, standing alone, does not establish rights in a mark sufficient to invoke the Policy, at least there is some proof that Complainant used the mark to identify goods or services that it provides. Respondent does not deny the factual allegation of such use, although it does assert that any such mark, should registration issue, would be invalid and in any event Respondent’s use of this term in various products for more than a decade would render Respondent’s rights superior to any that Complainant might acquire.

The Panel’s inquiry under paragraph 4(a)(i) of the Policy is limited to determination of whether Complainant has rights in a mark for Policy purposes at the date the Complaint was filed,¹ and, if so, whether the disputed domain names are identical or confusingly similar to it. Accuracy of filings with the USPTO and matters of priority among entities using the same or similar trade names are matters for the national trademark offices and on occasion the national courts. A panel under the Policy has no means to evaluate such things, and no jurisdiction to do so.²

Respondent has however demonstrated with competent evidence that for many years it has used Exam Saver as a name for several products or services that it has provided. Once again Complainant, at one time Respondent’s authorized reseller,³ may be presumed to have been aware of the product line it contracted to resell, so in the circumstances of this case the Panel finds that Respondent has demonstrated that prior to commencement of this proceeding it has for purposes of the Policy been commonly known by the operative phrase Exam Saver. The Complaint as to these two disputed domain names thus fails because Complainant has not carried its burden of proof under paragraph 4(a)(ii) of the Policy, and these same facts establish that there is no basis for any finding that in 2005 Respondent registered these domain names in bad faith.

C. Additional Relief

Respondent asks the Panel to enter a finding that Complainant unlawfully misappropriated the <technologyexams.com> domain name once owned by Respondent, and to order that domain name (and two others owned by Complainant) transferred from Complainant back to Respondent. This Panel has no power to make such a finding or to order such a transfer (though perhaps the same is not true as to another panel in a Policy proceeding initiated by Respondent against Complainant, properly supported by evidence). The only remedies available to a Panel in a Policy proceeding are an order transferring the disputed domain names from Respondent to Complainant or cancellation of the disputed domain names. Policy, paragraph 4(i). This Panel is without jurisdiction to grant the extraordinary relief Respondent seeks, and, lacking jurisdiction, declines to make any finding that in the circumstances would be entirely advisory and of no force or effect.

The Policy does empower the Panel to enter a finding of reverse domain name hijacking if the Panel determines that “the Complaint was brought in bad faith”, or “constitutes an abuse of the administrative proceeding”. Policy, paragraph 15(c). Ordinarily the Complaint in this proceeding would qualify for such a finding. Facts included in the Complaint or otherwise known to Complainant when the Complaint was filed that demonstrate the Complaint’s futility can be grounds for an adverse finding. Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598; see also dissenting opinion in Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033.

The circumstances of this case, however, incline the Panel not to enter such a finding. The pleadings reveal a long course of dealing between the parties or their principals, over issues that extend well beyond ownership to the disputed domain names. As illustrated by the parties’ opposite views on the very existence of the Technology Reseller Agreement, these matters turn on credibility of each party’s evidence. Without live testimony, cross-examination, and a record fully developed through discovery a panel under the Policy is ill-equipped to resolve such matters and, far more importantly, is granted no authority by the Policy or the parties’ agreement to do so. Such disputes belong in the national courts. As that is where these disputes may be headed, the Panel prefers to leave the parties as it found them, without assistance to either. See Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 (“a plague o’ both your houses”).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Richard G. Lyon
Sole Panelist

Dated: April 2, 2008

¹ E.g., Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416.

² Respondent is of course free to contest these matters in the USPTO or in the courts, and nothing in this opinion is intended to bear on such opposition, should it occur.

³ In the Reply Complainant’s president, Mr. Bortz, acknowledges his own status, well before commencement of this dispute, as Respondent’s reseller. So even if the Technology Reseller Agreement proffered by Respondent is not genuine Complainant had knowledge of Respondent and its products.