WorldLII Home | Databases | WorldLII | Search | Feedback

Generic Top Level Domain Name (gTLD) Decisions

You are here:  WorldLII >> Databases >> Generic Top Level Domain Name (gTLD) Decisions >> 2003 >> [2003] GENDND 288

Database Search | Name Search | Recent Decisions | Noteup | LawCite | Help

FileWave (USA), Inc. v. Chris Butler [2003] GENDND 288 (24 March 2003)


National Arbitration Forum

DECISION

FileWave (USA), Inc. v. Chris Butler

Claim Number:  FA0301000143682

PARTIES

Complainant is FileWave (USA), Inc., San Francisco, CA (“Complainant”) represented by Jennifer Ng, of FileWave (USA), Inc.. Respondent is Chris Butler, Norwich, CT (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <filewave.net>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 28, 2003; the Forum received a hard copy of the Complaint on January 31, 2003.

On February 3, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <filewave.net> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@filewave.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <filewave.net> domain name is identical to Complainant’s FILEWAVE mark.

2. Respondent does not have any rights or legitimate interests in the <filewave.net> domain name.

3. Respondent registered and used the <filewave.net> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a registered trademark with the United States Patent and Trademark Office for FILEWAVE (Reg. No. 1,967,669).  Complainant has used the mark in relation to its software and services since 1993 in the United States and Belgium.  The Complaint filed by Complainant in this proceeding is extremely brief and does not put forth any factual allegations regarding Respondent’s use of the disputed <filewave.net> domain name.  Complainant merely restates the Policy and adds one sentence asserting that Respondent “should not use” the domain name because the use would “mislead” Complainant’s customers.

Respondent registered the <filewave.net> domain name on July 23, 2001.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

         (2)         Respondent has no rights or legitimate interests in respect of the domain name; and

         (3)  the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the FILEWAVE mark through registration with the United States Patent and Trademark Office.

Respondent’s <filewave.net> domain name is identical to Complainant’s FILEWAVE mark because it incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain name “.net.”  The addition of a generic top-level domain name does not add any distinguishing characteristics capable of overcoming a Policy ¶ 4(a)(i) analysis.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests and Registration and Use in Bad Faith

Rule 3(b)(ix) of the UDRP states that the Complainant must:

Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,

         (1)      the manner in which the domain name is identical or confusingly similar to a trademark of service mark in which the Complainant has rights; and

         (2)      why the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint; and

         (3)      why the domain name should be considered as having been registered and being used in bad faith.

Complainant has failed to put forth any factual allegations regarding Respondent’s use of the disputed domain name, and as a result has failed to satisfy its burden under Rule 3(b)(ix).  Complainant has merely asserted that Respondent’s use of the disputed domain name would mislead Complainant’s customers.  Thus, Complainant has provided no evidence upon which the Panel may make a decision on the merits.  Even though Respondent failed to submit a Response in this proceeding, Complainant must still assert a prima facie case.  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case).  Respondent’s failure to file a response is not grounds to grant Complainant a decision in its favor if Complainant has failed to carry its own burden of proof.  See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of facts by Complainant that establish Respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name); see also PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO April 29, 2002) (finding that because Complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, Complainant failed to prove that the Respondent’s domain names were being used in bad faith).

The Panel finds that Complainant has failed to establish a prima facie case in compliance with Rule 3(b)(ix) and Policy ¶¶ 4(a)(ii) or (iii).

DECISION

The Panel concludes that relief shall be DENIED.

Sandra Franklin, Panelist

Dated: March 24, 2003


WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/288.html