Exclaim Technologies v. Net Exclamation
[Indexed as: Exclaim Technologies v. Net Exclamation]
[Indexed as:  exclaim.com]

eResolution Consortium
Administrative Panel Decision

eResolution File AF-0160
Commenced:  7 April 2000
Judgment:  16 May 2000

Presiding Panelist:  David Allsebrook

Domain name - Domain name dispute resolution policy -Trademark - Computer applications - Derivative of name - Domain registered before registration of trademark - Failure to contend bad faith - Failure to show bad faith.

The complainant owns the trademark in "Exclaim" in relation to various computer applications.  Respondent registered the domain name exclaim.com.  Complainant contends that it has trademark protection for the use of Exclaim for internet access, that the respondent company does not exist, the domain name has been abandoned and that exclaim.com is not nor has ever been an active site. 

Respondent contends that the domain name is a derivative of its own name, the domain name was registered several years before the Complainant registered its alleged trademark, the Complainant has not demonstrated that the company that registered the domain name does not exist and that the Complainant has not demonstrated that the domain name has been abandoned. 

Held, Name should not be transferred.

According to Paragraph 4(a) of Policy, Complainant must prove that (i) the domain name is identical or confusingly similar to service mark, and (ii) Respondent has no legitimate interest in respect of domain name, and (iii) domain name has been registered and is being used in bad faith.

The Complainant has not shown that the Respondent has no rights or legitimate interests in the name.  It based its argument on an allegation that the Respondent did not exist and had abandoned the domain name registration.  The Respondent has answered the Complaint, denied these allegations and asserted that it had registered the domain name before any use of Exclaim by the Complainant. 

It is possible for the term Exclaim to be used as a trademark in different industries or territories simultaneously without conflict.  The fact that a Complainant may have rights in a mark does not by itself preclude a third party from establishing rights in it at the same time.  The Complainant has not alleged or shown any conflict between any use the Respondent has made or might make of exclaim.com and its own rights. 

The Complainant has also failed to show bad faith registration and use.

Policies referred to

Uniform Domain name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

Net Solutions Inc.4.0 Service Agreement
 

Allsebrook, Panelist: --

1. Parties and Contested Domain Name 

The Complainant, Exclaim Technologies, is located in San Jose, California. The Respondent, Net Exclamation, is located in Sunnyvale California. Neither party appointed a representative. 

The contested domain name is exclaim.com. 

Remedy sought: Transfer 

2. Procedural History 

The electronic version of the Complaint form was filed on-line through eResolution's Website on March 24, 2000. The hardcopy of the Complaint Form was received on April 3, 2000. Payment was received on April 3,2000. 

Upon receiving all the required information, eResolution's clerk proceeded to: 

- Confirm the identity of the Registrar for the contested Domain Name; 

- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent; 

- Verify if the contested Domain Name resolved to an active Web page; 

- Verify if the Complaint was administratively compliant. 

The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information including the billing contact. The Contested Domain Name resolves to an active Web page and the Complaint is administratively compliant. 

The Clerk's Office obtained from the Registrar a confirmation that the domain name holder has a valid Registration Agreement (NSI - version 4.0). 

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. 

The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on April 7, 2000. That date is the commencement date of the administrative proceeding.

On April 7, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. 

On April 28, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on May 2, 2000. 

On May 8, 2000, the Clerk's Office contacted the undersigned, and requested for him to act as panelist in this case. 

On May 10, 2000, the undersigned accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. 

On May 10, 2000, the Clerk's Office forwarded a user name and a password to the undersigned, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. 

On May 10, 2000, the parties were notified that the undersigned had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 23, 2000. 

3. Factual Background

The Complainant's submissions are brief and are quoted below: 

Exclaim Technologies, Inc. owns the trademark to Exclaim for use in business for applications that run over the internet, ecommerce, online services, internet access, point of sale, to name a few specific trademark classification of coverage. Exclaim technologies, will using Exclaim.com to direct users to our corporate web presence. We have the right to use Exclaim.com. 

Exclaim is our corporate mark for the internet service we provide to our customers. 

Exclaim Technologies, Inc. does business as Exclaim. We are known in the business and customers access information about us through also through Exclaim.net. Exclaim.com is currently being redirected to an ISP that provide internet access. Exclaim Technologies, has trademark protection for the use of Exclaim for internet access. 

Exclaim has attempted on many occassions to contact the current Respondent about Exclaim.com. The company does not exist. The Respondent can't be reached. The domain is abandoned. Exclaim.com is being parked at an ISP. The ISP has no right to the domain but is the administrative, billing and technical contacts. The ISP doesn't wish to exercise any rights to claim the domain name, nor to they intend to renew the domain subscription (which is way past due, but has not been released for new Respondents). 

Exclaim has trademark protection for class of services using "Exclaim" as a mark. Exclaim.com is not nor has ever been an active site and is therefore viewed as speculative. It is currently being parked and redirected and an internet ISP which is getting the benefits of using Exclaim.com for the class of services regarding internet access that Exclaim Technologies, Inc. has protection for.

In addition, the Complainant filed a copy of a letter from its U.S. attorneys to it dated September 24, 1999. The letter reports the receipt of a filing receipt for a U.S. application to register the trade mark EXCLAIM which was filed on the basis of intent to use. The filing receipt was not entered into evidence.  The letter requests that the attorneys be advised when the Complainant's use of the trade mark begins. 

The Respondent's submissions are as follows: 

1. The domain name is clearly a derivative of the registrant's name, Net Exclamation.
2. More importantly, the domain name was registered several years before the Complainant registered its alleged trademark.
3. The Complainant has not demonstrated that it has tried to contact the company that registered the domain name.
4. The CompLainant has not demonstrated that the company that registered the domain name does not exist.
5. The Complainant has not demonstrated that the domain name has been abandoned.
6. The Complainant has no authority to make statements about the ISP's rights or intent with respect to the domain name.
7. The Complainant has not demonstrated that the domain subscription is past due.
8. There is no basis of which Big Net is aware for the Complainant to allege bad faith since the domain name was registered several years before the CompLainant registered its alleged trademark.
9. The domain name is clearly a derivative of the registering company's name.
10. The domain name is not an exact match for the name of the Complainant, and the Complainant could easily use its own name or a derivative that is different from the subject domain name.
11. The Complainant could have (and may have) checked for the domain name before it registered its alleged trademark.
12. The domain name was in use for several years before the Complainant registered its alleged trademark, and the Complainant had ample time to choose a different trademark.
13. The Complainant has created a conflict by voluntarily choosing an alleged trademark that is the same as an existing domain name that someone else was already using. 

4. Parties' Contentions 

The parties' contentions are set out in part 3 above. 

5. Discussion and Findings

In order to obtain transfer of the domain name to it the Complainant must show : 

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

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

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

The Complainant has not shown that the Respondent has no rights or legitimate interests in the name. It based its argument on an allegation that the Respondent did not exist and had abandoned the domain name registration. The Respondent has answered the Complaint, denied these allegations and asserted that it had registered the domain name before any use of EXCLAIM by the Complainant. 

The Respondent did not provide the date of its registration and the Complainant did not provide a date of first use of its name and trade mark. However it appears from the September 1999 letter that the trade mark was unused unitl at least that date. The Complainant's allegation that renewal of the domain name exclaim.com is « way past due » implies that the domain name registration is over three years old, as that was the registration term for domain names. 

More importantly, it is possible for the term EXCLAIM to be used as a trade mark in different industries or territories simultaneously without conflict. The fact that the Complainant may have rights in EXCLAIM does not by itself preclude a third party from establishing rights in it at the same time. The Complainant has not alleged or shown any conflict or potential conflict between any use the Respondent has made or might make of exclaim.com and its own rights. 

The Complainant has also failed to show that the Respondent has used the domain name in bad faith. 

The ICANN Uniform Domain Name Dispute Resolution Policy sets out the following guidelines for ascertaining whether a domain name has been used in bad faith. 

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or 

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or 

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. 

There is no evidence of any of these circumstances, or of any other instance of bad faith. 

6. Conclusions 

The Complaint is rejected. 

7. Signature 
 

Signed at Toronto,
Ontario this 16th day of May, 2000.
David Allsebrook
Presiding Panelist