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Smart Auctions Inc. v. Ecorp.com [2004] GENDND 208 (10 February 2004)
CPR Institute for Dispute Resolution
Under the ICANN Uniform Domain Name Dispute
Resolution Policy
366 Madison Avenue • New York, NY 10017-3122
• Tel. (212) 949-6490 • Fax (212) 949-8859 • cprneutrals@cpradr.org • www.cpradr.org
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COMPLAINANT
Smart Auctions Inc.
1584 Buttitta Drive, Unit #128
Streamwood, IL 606107
Telephone: (312) 842-1500
Fax: (312) 202-4713
E-mail: rlongman259@yahoo.com
vs.
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File Number:
CPR 0325
Date of Commencement: December 22, 2003
Domain Name(s): smartauction.com
Registrar: TUCOWS, INC.
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RESPONDENT
Ecorp.com
PO Box 441688
Indianapolis, Indiana 46244
Telephone: (317) 844-0073
Fax: Unknown
E-mail: domains@ecorp.com
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Before Louise E. Dembeck, Arbitrator
PROCEDURAL HISTORY
The Complaint was filed with CPR on December 22, 2003 and, after review for administrative compliance, it
was served on
the Respondent
on December 22, 2003. The Respondent filed a Response on January 19, 2003 which, because of an earlier
administrative error in
identifying the disputed domain name, was deemed a timely Response in these proceedings. On
January 26, 2003, Complainant submitted
a twenty-two (22) page “Response Brief in Support of Complainant Smartauctions,
Inc.’s Request for Domain Name Transfer” (the “Response
Brief”) purporting to respond to Respondent’s Response to the
Complaint. On January 27, 2003 Respondent objected to consideration
of Complainant’s Response Brief and indicated that,
if it was to be considered, Respondent would expect to be given an opportunity
to respond to the Response Brief.
1
I was appointed Arbitrator pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and Rules promulgated by
the
Internet Corporation for Domain Names and Numbers (ICANN) and the CPR Supplemental Rules (“CPR Supplemental Rules”) to
ICANN’s Rules
for UDRP. CPR is a duly constituted dispute resolution provider under the Rules.
The ICANN Rules provide for the filing of a Complaint and a Response. Rule 12 of the ICANN Rules provides, with respect
to “Further
Statements” that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion,
further statements
or documents from either of the Parties.” Rule 10 of the CPR Supplemental Rules provides, with respect
to “Further Statements,”
that “CPR will convey to the Panel any submission that it receives from any party prior to the
Panel's decision, so long as such
submission” complies with specified technical administrative requirements, “CPR will
not review such submission(s) for form or content,
and instead will defer to the Panel the decision whether, and to what
extent, such post-Response submission(s) will be accepted
and considered. See Electronic Commerce Media, Inc. v. Taos
Mountain, FA0008000095344 (October 11, 2000). Accordingly, the decision
as to whether to accept unsolicited additional
responsive pleadings is within my discretion.
The question of the admissibility of further submissions after the filing of the Response will be dealt with as a preliminary
issue.
The principles which should be applied in exercising discretion to accept or refuse further, unsolicited, submissions and
the weight,
if any to be attributed to them, have been considered in numerous cases decided under the Policy and Rules;
see e.g. the decisions
of WIPO Panels in WIPO Case Nos. D2000-0166 <plazahotel.com>, D2000-1151 <goldline.com>,
D2000-1571 <tdwatergouse.com>
et al., D2000-0270 <htmlease.com> and, D2003-0229 <pepsibabies.com>.
The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted
in
exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the
further material
when it made its primary submission; and that if further material is admitted, it should be limited so
as to minimize prejudice
to the other party or to the procedure.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive
procedure
for determining a certain type of domain name dispute, in which each party is entitled to make just one submission.
One of the matters
which a Panel has to bear in mind is that the admission of a further submission from one party may lead
the other party to submit
a further document in reply, which may lead to a further submission by the first party, and so
on, thereby compromising the procedural
economy sought to be established by the Policy and the Rules. And, indeed, as will
be noted below, that has been the case here.
1
Nevertheless, applying these principles to the present case, I note that the Complainant’s original Complaint is six (6)
double-spaced
pages in length and contains no exhibits or documentary evidence. The Response, on the other hand, is ten
(10) pages in length,
although Complainant correctly points out that it was prepared in less than 12-pt type, and the lines
were not double-spaced so
that it is arguably longer than the prescribed maximum ten (10) page pleading. In addition, the
Response contains twenty-eight
(28) pages of exhibits and four (4) pages of citations to authority. The Complainant’s
proffered Response Brief is twenty-two (22)
pages in length and includes a Table of Authorities but no exhibits or
documentary evidence. (Reference is made in the Response
Brief to Appendices occasionally but none were attached and
the Table of Contents indicated N/A which we understand to mean “not
applicable.”)
While I believe that the goals of permitting parties to resolve a dispute expeditiously, and at a low cost, can only be
promoted
by declining to consider additional pleadings except in extraordinary circumstances, the overwhelming disparity
between the initial
pleadings of the two parties in this case has led me to conclude there was here an extraordinary
circumstance. In the interest of
giving the Complainant, who had initiated this proceeding and bore the burden of proof,
an opportunity to provide the best evidence
it possibly could, I was persuaded that the Complainant did not anticipate
or comprehend the relevance of the arguments and material
that was to be presented by Respondent in its Response, or
even the extent of the burden of proof borne by the Complainant in this
proceeding, when it made its primary submission.
Moreover, the material contained in the Response Brief, by clarifying and conceding
issues raised in the Response and
not addressed in the Complaint, was essential to a full and fair hearing of those issues and did
not, in any way, prejudice
the Respondent or the expeditious handling of the procedure. In the exercise of my discretion, therefore,
I have
determined to accept and consider the Complainant’s Response Brief.
Upon the written submitted record including the Complaint, the Response with attachments, and the Response Brief of the
Complainant,
I find as follows:
FINDINGS
Respondent’s registered domain name, “smartauction.com”, was registered with Tucows, Inc. on September 11, 1998. In
registering
the name, Respondent agreed to submit to this forum to resolve any dispute concerning the domain name, pursuant
to the UDRP.
The UDRP provides, at Paragraph 4(a), that each of three findings must be
made in order for a Complainant to prevail:
| i. | Respondent’s domain name is identical or confusingly similar
to a trademark or service mark in which complainant has rights; and
|
| |
| ii. | Respondent has no rights or legitimate interests in respect of
the domain name; and
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| iii. | Respondent’s domain name has been registered and is being
used in bad faith. |
IDENTITY/CONFUSING SIMILARITY
Complainant alleges that “SMARTAUCTIONS” was first used by Atlantic Marketing, Inc. (an Illinois Corporation) on September
4, 1998
and was developed as a combination marketing and economic strategies provider to promote products and services
through the use of
online auctions. Complainant does not assert ownership of any registered trademark but bases its claim
on a U.S. trademark application
for the mark “SMARTAUCTIONS,” filed by Atlantic Business System, Inc. (another, related,
company), which provides a wide range of
services, including market strategies development. Complainant, Smart Auctions,
Inc., alleges that it is related to Atlantic Marketing,
Inc. and Atlantic Business System, Inc., was formed as a Delaware
Corporation to function as an online auction provider and somehow
has succeeded to the rights in and to the alleged
trademark, “SMART AUCTIONS.” Complainant also maintains that it owns, in its
own name, the domain name “smartauctions.com”
and is building a multi-million dollar company to operate through a website that will
be similar to eBay. Complainant also
alleges that it is the owner of the domain name “smartauctions.com”.
UDRP inquiries and rights are based on trademarks and service marks, not on domain names. While the filing of a trademark
application
does not, in and of itself, establish rights in a trademark, it is only from allegations in the Respondent’s
Response, its exhibits
and from statements in Complainant’s Response Brief that it becomes apparent that the U.S. trademark
application relied on by Complainant
for evidencing its rights in the “SMART AUCTIONS” mark, filed by Atlantic Business
Systems, Inc. in June 2002 under Serial No.
78/136657, was suspended by the U.S. Patent and Trademark Office because of the
existence of a prior, pending Application, Serial
Number 75738548, for the mark “SMARTAUCTION” filed by an independent third
party in the same class or classes. Complainant states
that it is the Plaintiff in an Opposition Proceeding, filed after
that mark proceeded to publication, before the Trademark Trial
and Appeal Board in which Complainant is opposing registration of
Serial Number 75738548 to that third party and asserting prior
rights. It appears that that proceeding is currently ongoing.
Although the Complainant stresses that it’s date of first use in commerce, September 4, 1998, is “indisputably supported by
solid
evidences,” there was no documentary evidence supporting that contention presented in this proceeding. Rather, despite
the fact
that Complainant was given the opportunity to submit a Response Brief after Respondent alleged in its Response that
“there is no
evidence that Complainant has common law trademark rights to the term “SMARTAUCTIONS” and pointed out that
“Complainant has presented
no evidence of use of the mark,” no supporting evidence was presented by Complainant. Complainant
has not actually alleged that
is has common law trademark right although it suggests that by claiming that, at the time it
filed its complaint, presumably in
this proceeding, Complainant “is and has been using the mark “SMARTAUCTIONS” in connection
with the online auction services” and
that “Complainant is and has been the rightful owner of “SMARTAUCTIONS.” Complainant
concedes, however, that it has “taken down
the old website for redevelopment” and while it has been getting quotes that
ranged “in the millions of dollars” for the redevelopment,
it was “senseless” to launch an under-construction website.
Complainant has no website at this time.
It is interesting to note that the Notice of Suspension of Complainant’s United States Trademark Application, SN78/136657,
attached
as Exhibit 5 to Respondent’s Brief, contains a statement that the examining attorney believes that the marks
“SMARTAUCTION” and
“SMARTAUCTIONS” are nearly identical. I concur. The mere omission of the letter "s" from a mark
such as "SMARTAUCTIONS" to yield
a contested domain name such as “smartauction.com” would be a change that is so
de minimus
it would utterly fail to dispel user confusion.
The Complainant has not failed to prove that the registered domain name “smartauction.com” is identical or confusingly
similar
to the trademark, “SMARTAUCTIONS.” I find that the domain name is identical or confusingly similar to the trademark
asserted by
Complainant to belong to Complainant. The problem here is that the Complainant has failed to prove a threshold
issue: that Complainant
has rights in and to the trademark SMARTAUCTIONS which can support this complaint.
The Policy does not aim to adjudicate between genuine conflicting interests. It is applicable only where there is clear
and unjustifiable
misappropriation of the Complainant’s mark. Consistent with the Policy’s objective of providing a simple
and speedy process for
the resolution of cases where the domain name has been registered and used without legitimate reason
and in abuse of the trade mark
rights of another, where the extent of Complainant’s own trademark rights are not clear, the
Complaint must fail. Accordingly,
there is no need to examine the legitimate rights or interest of the Respondent at this time.
The Complainant may be adjudicating its rights to the trademark at issue before the Trade Mark Trial and Appeal Board, and
elsewhere,
for that matter. This is not a determination of the Complainant’s trademark rights per se. Neither should it
be construed as
a determination that Respondent has superior rights. It is merely a determination that for the purposes of
the proceedings established
under the Policy, Complainant has failed to meet the threshold test necessary to resolve this
administrative proceeding. If ultimately
successful in establishing its trademark rights elsewhere, the Complainant will
not be estopped from filing another UDRP complaint.
Having reached the conclusion that the Complaint has failed to meet the requirements of Paragraph 4(a)(i), there is no need
to
proceed with examination of the other requirements of Paragraph 4(a).
DOMAIN NAME HIJACKING
Respondent asserts that Complainant is in breach of Rule 3(b)(xiv) and that the Complaint has been presented for an improper
purposes.
It requests a declaration pursuant to Rule 15(e) that the Complaint was brought in bad faith in an attempt at
Reverse Domain Name
Hijacking.
Respondent alleges, inter alia, that the Complainant has no registered trademark for SMARTAUCTIONS; that the mark is a
descriptive term; that Complainant’s trademark
application was filed 4-years after Respondent registered the domain name
at issue; that no evidence was presented that “Respondent”
[sic] has common law trademark rights to SMARTAUCTIONS or that
it has ever even used the term. Moreover, Respondent claims that
“Respondent’s” [sic] domain name SmartAuctions.com is
inactive; and that the Complainant withheld extremely relevant information
from the Panel concerning the pending underlying
trademark application and its suspension by the Patent and Trademark Office based
upon publication of a prior applicant’s
identical or nearly identical mark in the same class.
I have considered the record, including the Response Brief, and while I find that the Complaint fails and may, in some
respects,
have been misconceived, the Complainant may yet prevail in the opposition proceeding, or elsewhere, and there
is just not sufficient
evidence to establish that the Complaint was brought in bad faith in an to attempt to deprive
Respondent of its domain name.
CONCLUSION
In light of my findings above that the Complainant has failed to meet the requirements of Paragraph 4(a)(i) of the
Policy, the Complaint
against the Respondent is dismissed.
REMEDY
Complainant’s request to transfer the domain name “SMARTAUCTION” is hereby DENIED.
February 10, 2004
______________________________
______________________
Louise E. Dembeck
Date
1. On February 10, 2004, one day before the Decision on the Complaint was due
to be forwarded to CPR, Respondent submitted an unsolicited
Petition and proposed six (6) page Reply to Complainant’s
Response Brief with additional exhibits. Coming as it did at such a late
hour, and for all of the reasons discussed in
this Decision regarding unsolicited additional submissions, I believe that this is
not a case in which Respondent could
have discovered new or additional evidence not reasonably available to it at the time of its
initial submission, nor of
new arguments by the Complainant in the Response Brief that the Respondent could not, or did not, reasonably
anticipate.
Mindful of the requirements of both 10(b) of the Rules that “the Panel shall ensure that the Parties are treated with
equality and that each Party is given a fair opportunity to present its case”, and 10(c) of the Rules that ”the Panel
shall ensure
that the administrative proceeding takes place with due expedition”, I find no justification for the
exercise my discretion under
paragraph 10 of the Rules. Therefore, I hereby deny the Respondent’s Petition and I have
determined neither to admit, nor to consider,
Respondent’s unsolicited Reply.
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