DECISION

Acro Media Inc. c/o George Andres v. Acromedia, Inc. c/o Peter Smith

Claim Number: FA0305000159399

PARTIES

Complainant is Acro Media Inc. c/o George Andres, Kelowna, BC, CANADA (“Complainant”) represented by George Andres of Acro Media Inc. Respondent is Acromedia, Inc. c/o Peter Smith, North Augusta, SC, USA (“Respondent”) represented by Peter Smith of Acromedia, Inc.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <acromedia.com> registered with Network Solutions, Inc.

PANEL

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

David P. Miranda as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 22, 2003; the Forum received a hard copy of the Complaint on May 27, 2003.

On May 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <acromedia.com> is registered with Network Solutions, Inc. and that the 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 June 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 25, 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@acromedia.com by e-mail.

A timely Response was received and determined to be complete on June 25, 2003.

There are no Additional Submissions.

On July 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.      Complainant

Complainant Acro Media Inc. (herein after “Complainant”) seeks the transfer of the domain name <acromedia.com>.  Complainant is the owner of a trademark registered through the Canadian Trademark Office, registration and file numbers TMA66,933 and 1075537 for the trademark ACRO MEDIA INC. and design for the following goods and services:

Design and development of advertising, marketing, and promotional campaigns for others using single or multiple media; Internet website design and hosting; computer software programming for others; visual artistic and graphic design services for others; consulting design development implementation monitoring evaluation and maintenance services in the fields of technology systems design, business methods and systems design, multimedia design and integration.

The trademark was filed on September 19, 2000 and registered on September 5, 2002.  Complainant claims that the mark has been used in Canada since November 12, 1998.

Complainant contends that the domain name <acromedia.com> is confusingly similar to Complainant’s registered trademark and Complainant cites to instances of actual confusion by consumers.  Complainant contends that Respondent has no rights or legitimate interest in the domain name.  At one point Respondent used the website to market and sell its “sitewinder” software product, however, Complainant contends that for several months the website was inoperable and the site was dormant.  Complainant submits proof of Respondent’s use of the website to provide information regarding amateur soccer games which it contends is not a legitimate business purpose.

Complainant contends that the domain is registered and used in bad faith because the Respondent has offered to sell the domain name for the sale price of $10,000 well in excess of the out of pocket cost directly related to the registration cost of the domain name.  Complainant contends that the domain name is being held for no legitimate reason other than to profit from the sale of the domain name and that Respondent’s intent to sell the domain name to Complainant at a profit, thus satisfies the showing of bad faith.

B.      Respondent

Respondent Acromedia, Inc. (herein after “Respondent”) contends that the domain name <acromedia.com> is not confusingly similar to the trademarked ACROMEDIA, INC. because the domain name does not contain a space between “Acro” and “media”, and “Inc.” is not contained in the domain name.  Respondent contends that its business began operating in 1997 in the State of South Carolina as a legal business entity.  Respondent contends that the domain name was used to promote its products and services, namely its Sitewinder software and interactive services, making reference to several organizations that have purchased its products and services.  Respondent, contends that its website contained information regarding soccer activities at a time when its commercial site was under construction.  Respondent contends that it has been in business for over five years using the <acromedia.com> name and currently uses the name and website for promotion of its business.

Respondent further contends that it was unaware of Complainant’s trademark when it registered the domain name <acromedia.com> and formed its business Acromedia, Inc.  Respondent also contends that Complainant began doing business in 1998, the year after Respondent registered as a business in South Carolina and registered the domain name in question.  Respondent admits that it offered to sell the domain name for $10,000, however it did so because it was not interested in selling the domain name and thought that this offer would deter further inquiries from Complainant.  Respondent further contends that it has recently filed a U.S. Trademark Application for <acromedia.com>.

FINDINGS

Based upon a review of all the evidence of record, the panel finds that (1) the disputed domain name is confusingly similar to the Trademark Acromedia to which the Complainant has rights; (2) Complainant has failed to establish that Respondent has no rights or legitimate interests in the domain name at issue; (3) Complainant has failed to establish that the domain name was registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 provides evidence of a trademark registration with the Canadian Intellectual Property Office for the ACRO MEDIA INC mark (Reg. No. TMA566,933 registered on September 5, 2002) in relation to design and development of advertising, marketing and promotional campaigns for others using single or multiple media; Internet website design and hosting; computer software programming for others; visual, artistic and graphic design services for others; consulting, design, development, implementation, monitoring, evaluation and maintenance services in the fields of technology systems design, business methods and systems design, multimedia design and integration.  Complainant asserts that it was incorporated under the “Acro Media Inc.” name in 1998 in British Columbia, Canada.  Complainant has established its rights in the ACRO MEDIA INC mark with regard to Policy ¶ 4(a)(i) through registration with the Canadian Intellectual Property Office and continuous use in commerce since 1998.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Complainant has rights to the name when the mark is registered in a country even if Complainant has never traded in that country).

Complainant asserts that Respondent’s <acromedia.com> domain name is confusingly similar to Complainant’s ACRO MEDIA INC mark because the disputed domain name appropriates the principal elements of Complainant’s mark and merely omits the generic term “inc” from the end of the mark.  The omission of the generic term “inc” does not sufficiently differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i) because the Complainant’s mark remains the principal element of the domain name.  See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).  The domain name is confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

Respondent asserts that it has been in operation for over five years.  Respondent asserts that it had been using and building the “<acromedia.com>” brand for several months before Complainant claims it first begain doing business under the ACRO MEDIA, INC. trademark.  Respondent has a legitimate interest in the <acromedia.com> domain name because it has been in business under that name for five years.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name);  see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that Respondent does have a legitimate interest in the domain name where Complainant applied for registration of the mark after Respondent registered the domain name and Complainant has not proven any earlier use of the mark).

Respondent claims that its SiteWinder.exe client application for Windows is one of its flagship products.  The offering of this program on the website suggests a bona fide offering of goods or services with regard to Policy ¶ 4(c)(i), which demonstrates Respondent’s rights to and legitimate interests in the <acromedia.com> domain name.  See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Respondent is using the domain name for a legitimate and fair purpose and there is evidence that it is known by the disputed domain name);  see also3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development).

Registration and Use in Bad Faith

Respondent contends that it registered the <acromedia.com> domain name before Complainant acquired any interest in the ACRO MEDIA, INC. trademark.  The evidence produced shows that Complainant contends that its date of first use of the Acromedia, Inc. mark was November 11, 1998 and Respondent registered the <acromedia.com> domain name on July 23, 1997.

Respondents contention that its offer to sell the domain name for $10,000 was not a serious offer as it had no intention of actually selling the domain name, lacks credibility.  If Respondent had no intention of selling the domain name, it could have simply advised the Complainant of that fact.  However, Respondent’s offer to sell the domain name for $10,000 does not constitute bad faith registration or use because the Complainant has failed to establish that Respondent’s registration of the domain name was primarily for the purpose of selling it to the owner of the trademark for an amount in excess of out of pocket expenses.  The facts support a finding that Respondent registered and used the domain name primarily for promotion and sale of its products and services.  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent).

Respondent did not register the disputed domain name in bad faith because it registered the domain name before Complainant had any interest in the ACRO MEDIA, INC. mark.  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001) (finding that where Respondent  has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complaint seeking to disrupt Complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Miele, Inc. v. Absolute Air Cleaners & Purifiers, D2000-0756 (WIPO Sept. 11, 2000) (refusing to transfer the domain name where the Respondent used the domain name in bad faith by linking it to another website, but did not register the domain name in bad faith because he registered the domain name for use in connection with his Miele Appliance Dealership).

DECISION

Having failed to establish the second and third elements required under ICANN Policy, the Panel concludes that relief requested shall be DENIED.

Accordingly, it is Ordered that the <acromedia.com> domain name NOT BE TRANSFERRED.

David P. Miranda, Panelist
Dated: July 17, 2003

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