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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Priority Management Systems, Inc. v. C.E.O. Mentor Pty Ltd
Case No D2000-1522
1. The Parties
The Complainant is Priority Management Systems Inc., which is a corporation organised and existing under the laws of British Columbia. Its contact address is Unit 180, 13200 Delf Place, Richmond, British Columbia, V6C 2A2. It is represented by Messrs Graham & Dunn PC of 1420 Fifth Avenue, Suite 3300, Seattle, Washington 98101-2390, USA.
The Respondent, C.E.O. Mentor Pty Ltd is an Australian corporation with its principal place of business in Melbourne, Victoria, Australia. Its contact address appears to be (attention Neville Christie), PO Box 803, South Melbourne, Victoria 3205, Australia.
2. The Domain Name and Registrar
The domain name in dispute is "managemypriorities.com". The domain name was registered on April 21, 2000, with BulkRegister.com of 7 East Redwood Street, Third Floor, Baltimore, Maryland 21202, USA.
3. Procedural History
The Complaint was received on November 1, 2000. Notification of the Complaint and commencement of the administrative proceedings was given on November 21, 2000 by post and by e-mail. On November 22, 2000, a reply was received by e-mail from Mr.. Neville D Christie, the executive chairman of the Respondent, acknowledging the e-mail enclosing the Complaint, the notification of the Complaint and the commencement of the administrative proceedings. There is no record of a Response having been received from the Respondent. Accordingly, notice of the Respondents Default was given by the administrative Center by e-mail on December 15, 2000. This was acknowledged by Mr.. Christie on the same day when he indicated that he was "totally unaware that he was asked to make a response". He stated "however, I accept that matters are now proceeding as you have informed me – even though I believe the difference between "Priority Management" and "managemypriorities" is huge". On December 15 the Center e-mailed Mr.. Christie stating that if he wished to submit a late response, it should be submitted as soon as possible and it would be submitted to the Panellists once appointed. Mr.. Christie responded on the same day that he would like to make a Response, "either between Christmas and New Year or in the New Year". The Center responded on December 16, again reiterating that if Mr.. Christie wished to submit a late Response, the Center requested him to do so as soon as possible. No further communication was received from Mr. Christie until February 2001. In the meantime, a Panel consisting of sole Panellist Mr. Clive Thorne was appointed on January 5, 2001.
The documents were transmitted to the Panellists by e-mail on January 5. However, for some reason, hard copies were not received. A request for these was made at this time by the Panel which felt unable to decide the case without having sight of the Complainant's hard copy case and in particular the Annexes to the case. A reminder was given to the Center on January 31, 2001. A hard copy of the Complaint was eventually received on February 5, 2001. Appropriate extensions of time have been granted by the Center in the meantime.
On February 7, 2001, a late "Response" was received from Mr. Christie. As the Response arrived after the Panel had made his determination, it was not considered.
4. Factual background
The Complainant is the owner of trademarks registered in the United States and Australia. The United States registrations relied upon are for "Priority Management" plus a design no. 1566799 registered on November 21, 1989, for inter alia "loose leaf binders" and "Priority Manager" plus a design registration no. 2209176 registered on December 8, 1988, for "loose leaf binders etc".
The Australian registrations relied upon are for "Priority Management" plus a design, registration no. B473242 registered on January 14, 1991, for educational services and "Priority Management" plus a design no. A473238 registered on October 10, 1990, for "loose leaf binders etc". Additionally, the Complainant is the owner of the Australian trademark no. A542190 registered on November 9, 1993, for "The Priority Manager" for "printed matter". Copies of these registrations are exhibited at Annex D to the Complaint. It should be noted that US registration no. 73693275 expressly disclaims exclusive right to use "Priority Management" apart from the marker as shown. In Australia, Registration Certificate B473242 gives no right to exclusive use of the words "Priority Management".
The Complainant claims that it has used the trademark "Priority Management" for more than ten years. It argues that the trademark is inherently distinctive and has acquired a strong secondary meaning in connection with services relating to time and schedule management. It submits that it has expended a substantial amount of time, money and effort in the development of marketing and advertising the trademarks "Priority Management" and "Priority Manager" so that its marks are widely recognisable as identifying time and schedule management services. It has also developed strong consumer demand for its time management seminars and products and has generated substantial goodwill associated with the marks. As the above is uncontested, the Panel is prepared to accept this evidence.
The Complainant submits that in about September 2000, it had learned that the Respondent had registered the domain name "managemypriorities.com" and subsequently wrote a demand letter is exhibited as Annex E informing the Respondent of its rights and requesting cancellation of the domain name registration. The Respondent responded on October 10, 2000, indicating that it had examined the case and looked at its sites and concluded that it offered different services "in quite different areas of the time management market. In addition, there is no question of the name being deceptively similar". The Respondent also floated the idea of the purchase of the domain name. This e-mailed response is exhibited at Annex F to the Complaint.
There is no further evidence of correspondence or communication between the parties.
In order to succeed in its Complaint the Complainant has the burden of proof within paragraph 4(a) of the policy to 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 interest in respect of the domain name; and
(iii) the domain has been registered and is being used in bad faith.
The Panel proceeds to deal with each in turn.
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant submits that the Respondent's domain name is confusingly similar to the trademarks "Priority Management" and "Priority Manager". This is because the dominant elements of the domain name are "Manage and "Priorities". The dominant elements of the trademarks are "Management (or Manager)" and "Priority". It submits that the reversal of the dominant elements in the Complainant's trademarks in the domain name "managemypriorites.com" do not differentiate or distinguish the domain name in any significant or meaningful way.
Moreover, it relies on information relating to time management on the website "managemypriorities.com" which it exhibits as Annex G to the Complaint. It asserts that the domain name is confusingly similar to its marks and relies upon United States case law in support of its contention.
The Panel is not an appropriate body to decide issues of trademark law. These are best dealt with by a court handling issues of trademark infringement. The domain name does of course incorporate the words "Manage" and "Priorities". The Panel is mindful of the fact that words such as "Priority" and "Management" are essentially descriptive and that they are not incorporated in the domain name in that form. The words incorporated in the domain name are "Manage" and "Priorities". Moreover, the domain name consists essentially of a vocative phrase containing the adjective "my". The Panel does not accept that the domain name is "identical" to that of the Complainant's trademarks relied upon and is not convinced that it is "confusingly similar" to the Complainant's trademarks.
(ii) The Complainant submits that the response has no right or legitimate interest in the domain name.
The Complainant asserts that "until recently the domain name was not in use and that its current normal use appears to be in response to the Complainant's demand letter. It also asserts that the domain name is merely one of 1,500 domain names the Respondent claims to offer for sale. It does not produce evidence to support this submission. Against the Complainant's submission is the extract from the Respondent's website exhibited at Annex G to the Complaint. In the Panel's view does appear to offer some sort of time management service.
Given the limited evidence and bearing in mind that burden of proof is upon the Complainant, the Panel does not accept that the Complainant has proved the Respondent has no rights or legitimate interests in respect of the domain name.
(iii) The domain name is registered and is being used in bad faith.
The Complainant submits that "circumstances indicate that the Respondent has registered the domain name primarily for the purpose of selling the domain name to the Complainant or a competitor for valuable consideration in excess of the Respondent's out of pocket costs". No evidence is given to support this claim. In the Panel's view, the only evidence referring to sale is the suggestion contained in the Respondent's e-mail of October 10, which merely floats the idea of the Respondent being "open to the idea of your client purchasing the domain name".
The Complainant also submits that the Respondent is, as a "seller" of time management services, a competitor and intends to use the domain name for unfairly diverting business from the Complainant. No evidence is given to support this assertion.
The Complainant further asserts that the Respondent has "intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with" the Complainant's marks. Again no evidence is adduced by the Complainant to support this submission.
In these circumstances and taking into account, particularly the lack of evidence to support the Complaint of bad faith, the Panel does not accept that the Complainant has succeeded in showing that the domain name was registered and is being used in bad faith.
6. Decision and Findings
The decision of the Panel is that the Complainant has failed to satisfy the Panel that there should be a transfer of the domain name from the Respondent to the Complainant. The complaint is dismissed.
Clive Duncan Thorne
Dated: February 12, 2001