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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blue Martini Software, Inc. v. Entredomains, Inc.
Case No. D2000-0917
1. The Parties
Complainant is Blue Martini Software, Inc., a Delaware corporation located in San Mateo, California, USA.
Respondent appears to be Entredomains, Inc., located in Las Vegas, Nevada, USA.
Respondent is listed as the registrant for the disputed domain name as "The Domain Name You Have Entered is for Sale."
2. The Domain Name and Registrar
The domain name at issue is "bluemartinisoftware.com".
The registrar is Network Solutions, Inc., located in Herndon, Virginia USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was submitted on August 1, 2000. An informal Response was submitted on August 28, 2000. A reply brief was submitted by Complainant on September 6, 2000. Mark V.B. Partridge was appointed as single panelist on November 10, 2000.
Complainant’s request to submit a reply brief is denied.
4. Factual Background
Complainant develops enterprise-scale e-business application software. Complainant began using the marks BLUE MARTINI and BLUE MARTINI SOFTWARE in 1998. Its marks are the subject of pending intent to use U.S. trademark applications filed on November 3, 1998, September 23, 1998 and December 29, 1998. Complainant has also obtained foreign registrations of its BLUE MARTINI mark, dated May 3, 1999 (Australia), June 9, 1999 (Germany) and April 30, 1999 (Switzerland), and has pending applications in other countries.
In the first quarter of 1999, Complainant’s advertising budget was in excess of $700,000. Complainant enjoyed over $10 million is sales in 1999.
Respondent registered the disputed domain name on March 10, 2000, giving the following phrase as the registrant’s name: "The Domain Name You Have Entered Is for Sale." The administrative contact is identified as Entredomains, Inc. Entredomains operates a web site at www.entredomains.com that offer various domain names for sale. It appears that Respondent has registered many domain names that are confusingly similar to well-known trademarks.
On March 10, 2000, Complainant received an e-mail message from email@example.com stating: "[s]omeone e-mailed me about a domain name I own. Bluemartinisoftware.com. Yes, it is for sale." Complainant states that no one made an inquiry on its behalf.
On May 18, 2000, Complainant, through counsel, wrote to Respondent demanding transfer of the disputed domain name. On May 24, 2000, Complainant’s counsel received an e-mail message stating that Respondent intended to use the domain name for its own company and would litigate the matter unless Complainant had a "better proposal."
On July 9, 2000, Complainant received another e-mail from firstname.lastname@example.org stating: "I have a great domain name for sale. Bluemartinisoftware.com."
On July 25, 2000, email@example.com sent another e-mail message stating that his asking price was $6,600.
On July 31, 2000, Complainant received another e-mail message giving it until August 1, 2000 "as I have received another off [sic] I will accept at that time."
Respondent was also a party to Cree, Inc. v. Entredomains, ICANN No. 005000094790 (NAF 2000), in which the Panel determined that it was engaged in a pattern of bad faith conduct by registering domain names that are confusingly similar to the trademarks of others.
5. Parties’ Contentions
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. It also contends Respondent has registered and used the domain name in bad faith because it intends to sell them for profit.
Respondent contends that its company registers generic domain names and that any domain names corresponding to the trademarks of others were registered at the trademark owner’s request. Respondent claims that Complainant solicited the offer of sale as an entrapment tactic. Finally, Respondent states "If bluemartinisoftware is a trademarked name . . . then we will simply turn over this domain name without question."
The first issue is consideration of the Response and Reply.
As a domain name registrant, Respondent is contractually obligated to comply with the Policy and Rules. Paragraph 4 of the Policy informs a registrant that it is "required to submit to a mandatory administrative proceeding." The Rules specify the requirements of a Response to a Complaint filed in accordance with the Policy, including certification that the Response is complete and accurate. Regrettably, Respondent has failed to comply with its obligations. Its informal Response is not signed or certified. To expedite the resolution of this matter, however, I have considered the Response as if it had been properly submitted.
The Policy and Rules applicable to this procedure do not provide for a reply as of right. There is a split in the decisions regarding the consideration of unsolicited replies. See Rollerblade, Inc. CBNO and Ray Redican Jr., ICANN No. D2000-0427 (WIPO 2000)(citing cases). The Panel in the Rollerblade case denied Complainant’s request to file a reply, stating: "The Policy and Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances. We believe this is wise procedure given the nature of the proceedings." I will apply the same principle here and deny Complainant’s request to submit a reply.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and used in bad faith.
A. Similarity between Domain Name and Trademark
The disputed domain name is identical or confusingly similar to Complainant’s marks and company name. Complainant has common law rights in the mark prior to the registration of the disputed domain name based on sales and advertising in 1999. Complainant also has foreign registrations of the mark BLUE MARTINI that predate Respondent’s registration of the domain name. Therefore, I find that Complainant has satisfied the requirements of Paragraph 4(a)(i). I do not rely on Complainant’s U.S. applications. Although the applications put Respondent on notice of Complainant’s inchoate claim of right, an application provides no enforceable rights until the registration issues.
B. Respondent’s Legitimate Interest in Domain Name.
Here, Respondent has submitted no evidence of any demonstrable plan to use the domain name in connection with a bona fide offering of goods or services. Further, it is admitted that Respondent has made no bona fide commercial, non-commercial or fair use of the disputed domain name.
Respondent alleges that an unidentified client retained it to register the domain name. This vague and ambiguous claim is insufficient to demonstrate a legitimate interest in the domain name.
It appears that the disputed domain name was registered for the purpose of selling it for profit. Speculation in the sale of domain names corresponding to the marks of others is not a legitimate interest. See J. Crew International v. crew.com, ICANN No. D2000-0054 (WIPO 2000).
Based on the record before, I find that Complainant has shown by a preponderance of the evidence that Respondent lacks any legitimate interest in the disputed domain names as required under Paragraph 4(a)(ii).
C. Bad Faith Registration and Use
Respondent’s messages to Complainant indicate that Respondent registered and used the domain name with the purpose of selling it for profit. Respondent registered the domain name using an alias indicating the domain name was for sale. That same day, it offered to sell the domain name to the Complainant. It pressed Complainant on several occasions, finally asserting a deadline before the name would go to another bidder. It refused Complainant’s demand for transfer, stating it would litigate "unless you have a better proposal." I believe these facts are sufficient to establish bad faith registration and use under Paragraph 4(b)(i) of the Policy.
Respondent’s justifications for its registration and use of the domain name are not credible. Respondent claims it registered the domain name for an unidentified third party. No evidence is given to support that claim, and the claim is undermined by Respondent’s use of the phrase "The Domain Name You Have Entered Is For Sale" as the registrant’s name. Respondent also claims that its offers to sell the domain name to Complainant were solicited by Complainant to entrap Respondent. Again, there is no evidence of any correspondence from Complainant soliciting an offer, and it is clear that Respondent intended from the start to sell the domain name for profit.
I conclude that the domain name is identical or confusingly similar to marks in which Complainant has prior rights; that Respondent lacks any rights or legitimate interests in the disputed domain name; and that Respondent registered and used the disputed domain name in bad faith. Accordingly, I find in favor of Complainant and conclude that the domain name "bluemartinisoftware.com" should be transferred to Complainant.
Mark V. B. Partridge
Date: November 24, 2000