Competitive Advantage, Inc. v. MailMania.com
[Indexed as: Competitive Advantage v. MailMania]
[Indexed as: MailMania.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0288
Commenced: 21 April, 2000
Judgment: 30 May, 2000
Panelist: Jeffrey Samuels, G Gervaise Davis III and David Perkins
Domain name - U.S. Trade Mark - Canadian Trade Mark - Identical -Confusingly
similar - Legitimate interests.
Complainant operates a mail order service for children, and applied
to register the Mail Mania mark with the US Patent and Trade Mark Office
in December 1998.
Respondent develops Internet Software and Internet Websites, including
Internet Communication Programs, and registered the domain name, MailMania.com
on October 12, 1998.
Held, Name Not Transferred to Complainant.
Complainant's US trade mark Mail Mania and the Respondent's domain
name in issue MailMania.com are identical.
Respondent provided evidence that it was using the domain name, MailMania.com
in connection with the bona fide offering of its Mail Mania secure mail
server system in the Fall of 1998 before Complainant began use of the Mail
Mania trade mark in June (or September) 1999. Further, the domain name
in issue continues to be used by Respondent's licensee. On a plain reading
of the Policy, Respondent has demonstrated both rights and legitimate interests
in the domain name in issue. It is, therefore, unnecessary to decide
whether the domain name in issue was registered and is being used in bath
faith; however, the Panel finds that Complaint fails to establish either.
The Panel agrees with a view expressed in CRS Technology Corporation
.v. Condenet Inc. In that case it was found that the first person
or entity to register the domain name should prevail where the domain
name is a generic word and where that word is widely used as a trade or
service mark, although almost always in connection with modifiers or qualifiers.
Registration Agreements referred to
International Corporation for Assigned Names and Numbers (ICANN) Policy
and Rules
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
Case referred to
CRS Technology Corporation v. Condenet Inc.
Panel Decision referred to
-Samuels, Davis III, Perkins, Panelists: -
1._The Parties
The Complainant is Competitive Advantage, Inc of 1510 Chester Pike,
Baldwin Tower, Suite 110, Eddystone, Pennsylvania 19022 United States of
America.
The Respondent is MailMania.com of 77 Mowat Avenue, Suite 508, Toronto,
Ontario M6K 3E3, Canada
2._The domain name and Registrar
The domain name at issue is:
MailMania.com
and the Registrar is Network Solutions, Inc.
3._Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the
Complaint on April 12, 2000 [electronic version] and April 14, 2000 [hard
copy]. The Centre verified that the Complaint satisfies the formal requirements
of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy],
the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules]
and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
[the Supplemental Rules]. The Complainant made the required payment to
the Center.
The formal date of commencement of this administrative proceeding is
April 21, 2000.
On April 19, 2000, the Center transmitted via email to Network Solutions,
Inc a request for registrar verification in connection with this case and
on April 20, 2000, Network Solutions Inc transmitted by email to the Center
Network Solutions Inc's verification response confirming that the registrant
is MailMania.com and that the contact for both administrative and billing
purposes is Mr. Ray King of Wired Solutions Inc.
Having verified that the Complaint satisfied the formal requirements
of the Policy and the Rules, the Center transmitted on April 21, 2000,
to:
postmaster@mailmania.com;
ray@wiredsolutions.com; and
dusadmin@wiredsolutions.com
The Notification of Complaint and Commencement of the Administrative
Proceeding. The Center advised that the Response was due by May 10, 2000.
On the same day the Center transmitted by fax and by mail copies of the
forgoing documents to:
MailMania.com
77 Mowat Avenue
Suite 508
Toronto
Ontario M6K 3E3
Canada
and to
Ray King
Wired Solutions Inc
77 Mowat Avenue
Suite 508
Toronto
Ontario M6K 3E3
Canada
The Response was received on May 1, 2000. The Respondent elected to
have this Case adjudicated by a 3 member panel.
Having received Declarations of Impartiality and Independence and Statements
of Acceptance from Mr. Jeffrey Samuels; Mr. G Gervaise Davis III; and Mr.
David Perkins on May 22, 2000, the Center transmitted to the parties a
Notification of Appointment of Administrative Panel and Projected Decision
Date, in which Messrs. Jeffrey Samuels, G Gervaise Davis III and David
Perkins were formally appointed Panelists, with Mr. David Perkins as the
Presiding Panelist. The Projected Decision Date was June 5, 2000. The Panelists
find that the Administrative Panel was properly constituted and appointed
in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file the Administrative
Panel finds that the Center has discharged its responsibility under Paragraph
2(a) of the Rules "to employ reasonably available means calculated to achieve
actual notice to Respondents". Therefore, the Administrative Panel shall
issue its Decision based upon the Complaint, the Response, the Policy,
the Rules and the Supplemental Rules.
4._Factual Background
4.1_The Complainant
The Complainant, Competitive Advantage Inc operates a mail order service
for children. The Complainant' s website [Exhibit A of the Response] states:
"The concept behind Mail Mania is simple. You buy a colourful, illustrated
mail box from Dream Chaser Enterprises, via their toll?free line at 1?877?MAIL?4?KIDS.
There are three different age?appropriate mail programs to chose from:
Pet Shop Pen Pals (ages 4?8), Dream Riders (ages 8 and up), or Sneaker
Seekers (ages 9 and up). Each mailbox contains a simple introductory kit
to the program. All you and your child need to do is mark a choice of pen
pal and/or subject matter on the enclosed reply card and send it in. Within
a few weeks, your child will begin receiving personalised letters, one
every two weeks. The initial $9.99 mailbox purchase includes six of these
letters, providing three months of Mail Mania fun."
The Complaint states that the Complainant began using the trade mark
"Mail Mania" on June 1, 1999. However, the Complainant's website [Exhibit
A to the Response] refers to a "... launch date of 9/9/99.".
4.2_The Respondent
The Respondent is Raymond Marc King operating under the name and style
of MailMania.com. Mr. King is an individual engaged in the development
of Internet Software and Internet Websites. The Respondent states that
he has developed several Internet Communication Programs and Exhibit D1
to the Response gives brief particulars of 4 such programs, namely QuickChat:
ChatWorld: MailMania: MegaBoard: and DocuCom. The MailMania product is
described as
"Essentially a ‘secured mail server'. Mail is both received and sent
from a secure web page using either 40 or 128 bit Secure Socket Layers
(SSL) encryption (depending on laws). MailMania is perfect for the Internet
since it is fully Web?Based and can be accessed from anywhere in the world,
all securely via SSL. The system is also instant. Because we deal with
database technologies, we are able to ensure data is INSTANTLY available
to the receiving party. Full auditing, tracking and reporting is also built?in
and a pay?per?use scenario can easily be adopted."
The Response exhibits at D2 a copy of the homepage of the MailMania.com
website as operated in the Fall of 1998. The Response states that thereafter
the software packages were sold to a third party and the domain name in
issue has been temporarily licensed to a third party.
It is admitted in the Response that the URL currently leads to a web
site called NakedNewsNet.com, which is a referring source for Adult Internet
Content. The Respondent states that to the best of his knowledge and belief
and on assurance from the operators of that site, the content of the site
is a legal and legitimate use of the Internet and complies with all laws
of Canada and the United States. The Complaint refers to NakedNewsNet.com
as a pornographic website but does not make any allegation that it violates
any applicable laws or regulations.
4.3_The Complainant's Trade Mark
On December 14,1998, the Complainant applied to register the Mail Mania
mark with the US Patent and Trade Mark Office for:
"Mail order children's project club featuring puzzles, games, stickers,
mobiles, stories, and a children's letter periodically mailed that addresses
one of several subject matters including games, puzzles and pets."
This US App. 75,604/706 was published as an INTENT to use a US trade
mark on August 24, 1999. The actual TM has not yet issued but has been
allowed as of May 5, 2000, according to US PTO records.
The Complaint states that the Complainant has used that Mark since June
1, 1999. However, as noted in para. 4.1 above, the Complainant's website
refers to launching its business on September 9, 1999. The difference in
dates is not material for the purposes of this Decision. The Complainant's
website is www.mailmaniacs.com [Exhibits A and B to the Response].
The application for [December 14, 1998] and issue of [August 24,1999]
the Complainant's US INTENT to use Mail Mania both post date registration
on October 12, 1998, of the domain name in issue. Further, use of the Complainant's
Mail Mania mark, be it June 1 or September 9, 1999, post dates use by the
Respondent of the domain name in issue in the Fall of 1998.
4.4_The Response
This contains, inter alia, the following submissions.
! When the Respondent registered the domain name in issue (October
1998) he conducted a Canadian and US trade mark search and found no registration
for Mail Mania by the Complainant. This is not surprising, given that the
Complainant did not apply for its US mark until December 1998.
! Had the Complainant checked for availability of domain names
using the words Mail Mania at the time of commencing his business ? be
it June 1 or September 9, 1999 ? the Respondent points to the fact that
both MailMania.net and MailMania.org were available at that period. MailMania.net
was not registered as a domain name until January 10, 2000 [Exhibit C1]
and MailMania.org was not registered until March 22, 2000 [Exhibit C2].
! Not only was the domain name in issue registered [October 12,
1998] before the Complainant applied for its US trade mark [December 14,
1998] but subsequent to the latter date other parties have acquired top
level domain names for MailMania. The Response cites as an example Mail
Mania of Solana Beach, California [Exhibit E to the Response].
! The Respondent operated the domain name in issue as an active
website in the Fall of 1998 and its current use as licensed to a third
party is not, to the Respondent's knowledge in violation of applicable
laws or registrations [para. 4.2 above].
! The Respondent contends that the words mail and mania are generic.
Mail in the form of electronic mail is a key element and primary use of
the Internet and the Respondent chose the domain name in issue because
it intuitively communicated an aspect of the service for which the Respondent
intended to use the name, namely the MailMania and ChatWorld communication
software.
4.5_Disputed Facts
The Complaint states:
"A representative for Competitive Advantage contacted MailMania.com
during the Summer of 1999 to inform the Respondent of Competitive Advantage's
rights in the Mail Mania mark and to request that the MailMania.com domain
name registration be transferred to Competitive Advantage. MailMania.com
demanded that it be paid $92,000 for the domain name and has refused to
transfer the domain name to Competitive Advantage without the payment of
such monies."
In this respect the Response states in para. 14
"King has never contacted the Complainant to offer to sell it the domain
name. If there was any contact as alleged by the Complainant, (which is
not admitted but is specifically denied) then it was by the Complainant
contacting King."
The Panel does not find it necessary to make a ruling in relation to
this conflict because of the bases upon which its Decision is based (see
below).
5._Parties' Contentions
A. _The Complainant
The Complainant contends that the Respondent has registered as domain
names a mark which is identical to or confusingly similar to the Complainant's
Mail Mania mark, that the Respondent has no rights or legitimate interests
in respect of that domain name and that the Respondent has registered and
is using that domain name in bad faith.
B._The Respondent
The Respondent asserts that it has both rights and a legitimate interest
in respect of the domain name in issue and that such domain name was registered
and is being used in good faith. For those reasons, the Complaint should
be rejected as not meeting the requirements of para. 4a of the Policy.
6._Discussion and Findings
6.1_The Policy para. 4a provides that the Complainant must prove each
of the following:
?_that the Respondent's domain name is identical or confusingly similar
to a trademark or service mark in which the Complainant
has rights; and
?_the Respondent has no rights or legitimate interests in respect of
the domain name; and
?_the domain name has been registered and is being used in bad faith.
6.2_Identical or Confusingly Similar
The Complainant's US trade mark Mail Mania and the Respondent's domain
name in issue MailMania.com are, to all intents and purposes, identical.
Thus, the Complaint satisfies the requirements of para. 4a(i).
6.3_Rights or Legitimate Interests
Para. 4c of the Policy identifies circumstances which, in particular,
but without limitation, if found by the Panel to be proved based on its
evaluation of all the evidence presented, shall demonstrate the Respondent's
rights or legitimate interest for the purpose of para. 4a(ii). Those circumstances
are that:
(i)_before any notice to the Respondent of the dispute, the Respondent's
use of, or demonstrable preparations to use the domain name or a domain
name corresponding to the domain name, in connection with a bona fide offering
of goods or services; or
(ii)_the Respondent (as an individual, business, or other organisation)
has been commonly known by the domain name, even if it has acquired no
trade mark or service mark rights; or
(iii)_the Respondent is making a legitimate non?commercial or fair use
of the domain name without intent for commercial gain to misleading divert
customers or to tarnish the trade mark or service mark at issue.
6.4_The Respondent has provided evidence that it was using the domain
name in issue in connection with the bona fide offering of its Mail Mania
secure mail server system in the Fall of 1998 before the Complainant began
use of the Mail Mania trade mark in June (or September) 1999. Further,
the domain name in issue continues to be used by the Respondent's licensee.
There is no evidence that use of the domain name has been or is being used
in violation of any applicable laws or regulations.
6.5_The Respondent cites a decision of the National Arbitration Forum
[FA #002000093547] in CRS Technology Corporation .v. Condenet Inc concerning
the domain name conceirge.com. CRS were the proprietors of a Canadian trademark
registration for CONCIERGE in respect of computer software application
interfaces using intelligent technologies which provide access to travel
services. The application for the mark was made in May 1995 and registered
in April 1998. In July 1999 Condenet set up a home page announcing its
concierge.com service providing travel tips and advice, information on
travel promotions, fare?finders, reviews of hotels, cruises and resorts,
and other travel related topics. The Complaint was rejected and the Panel
concluded [at para. 16 of the Decision]:
"Here, even though the trademark and name are all but identical, the
Panel has determined that the first person or entity to register the domain
name should prevail in circumstances such as these where the domain name
is a generic word, here indicating a provider of services, and where that
word is widely used as a trade or service mark, although almost always
in connection with modifiers or qualifiers."
6.6_Although that Decision is neither totally in point nor does it have
any particular precedential value, it does in the above quoted reference
express a view with which this Panel generally agrees. On a plain reading
of the Policy, the Respondent has demonstrated both rights and legitimate
interests in the domain name in issue. Further, the Complainant apparently
trades using the domain name www.mailmaniacs.com and has produced no evidence
of confusion with the Respondent's domain name in issue. The Complainant
fails to meet the requirement of para. 4a(ii) of the Policy and as a consequence
the Complaint fails in its entirety.
6.7_Bad Faith
It is, therefore, unnecessary to decide whether the domain name in issue
was registered and is being used in bath faith [para. 4a(iii) of the Policy].
However, the Complaint totally fails to establish either. On the evidence
before this Panel, the Complainant fails to satisfy any of the instances
of registration and use in bad faith illustrated in para 4b of the Policy.
7._Decision
For all the forgoing reasons, the Panel decides that the Complainant
has failed to prove two of the three elements of para. 4a of the Policy.
Accordingly, the Panel denies the request that the
registration of the domain name MailMania.com be transferred to the
Complainant.
David Perkins
Presiding Panelist
_Jeffrey Samuels _G Gervaise Davis III
_Panelists
Dated: May 30, 2000
Domain
Name Not Transferred
