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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Symbility Solutions, Inc. v. Darren Ritchie / Symbility

Case No. D2007-0471

 

1. The Parties

The Complainant is Symbility Solutions, Inc. of Ontario, Canada, represented by Richard Adair, Canada.

The Respondent is Darren Ritchie / Symbilityof St. Julians, Malta.

2. The Domain Name and Registrar

The disputed domain name <symbility.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2007. On March 28, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 29, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2007. The Response was filed with the Center on May 15, 2007.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 21, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant asserts “common law trademark to the name Symbility in a commercial setting to refer to the company and its web based software application Symbility.net”. Complainant states that it operates its business in “North America”. Complainant asserts it has been using this trademark since July 2002.

Complainant indicates it is in the process of registering its trademark, but has submitted no evidence to support that assertion, nor has it specified the geographic territory for which it is seeking registration.

Complainant has registered several domain names for its business, including <symbility.net> and <symbilitysolutions.com>.

Complainant did not submit any evidence of its actual conduct of business, with the exception of a single e-mail from a potential service provider (Complaint, Annex 3), but Respondent indicated that Complainant is operating a commercial Internet web site at “www.symbilitysolutions.com”.

According to the Registrar’s Verification report, Respondent is the registrant of the disputed domain name. According to an eNom Whois database report, the record of registration for the disputed domain name was created on April 8, 2002.

Respondent indicates that it performed trademark registration searches for the United States, United Kingdom and the European Union before it registered the disputed domain name in April 2002, and that it also searched “www.google.com” and “www.yahoo.com” in April 2002, finding no return matches for the term “symbility”. In addition, according to Respondent, no other domain names containing the term “symbility” were registered as of April 2002.

Respondent assets it has used <darrenr@symbility.com> as an e-mail address since the disputed domain name was registered in April 2002. It submitted evidence of such use at least as early as June 3, 2003. Respondent indicates that it also uses the disputed domain naming for other nonpublic data management purposes.

Complainant contacted Respondent concerning the disputed domain name in July 2006, at which time Respondent advised Complainant that it was using the disputed domain name for e-mail and other nonpublic purposes.

The Registration Agreement in effect between Respondent and eNom subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant argues that it has common law trademark rights in the term “symbility” which it has been using since July 2002. Complainant states that it operates its business in North America over the Internet. Complainant states that trademark registration is under way.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant argues that Respondent has not used a “web page with bona fide commercial content”.

Complainant alleges that, while Respondent may be using the disputed domain name in an e-mail address, it is not doing so “for bona fide commercial purposes”. Complainant has been unable to find evidence that Respondent maintains a business operation in Malta.

Complainant contends that the disputed domain name is “incredibly misleading so much so that even experienced Internet users mistakenly use Symbility.com instead of Symbility.net when composing e-mail messages”. This results in confidential material being inadvertently sent to the Respondent’s domain name.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

Respondent alleges that Complainant has failed to establish common law trademark rights in the term “symbility”. Respondent argues that Complainant’s product was not launched until April 2005. It also indicates that a Google search of the term “symbility” shows only 231 non duplicative results. Respondent indicates that Complainant has provided no evidence of pending trademark applications.

Respondent alleges that it has made legitimate commercial use of the disputed domain name by using it in an e-mail address and for FTP purposes. Moreover, Respondent argues that e-mail use of a domain name need not be commercial to establish a right or legitimate interest. Respondent argues that Complainant was aware of its usage.

Respondent contends that it is not responsible for third-party error in preparing e-mails to Complainant.

Respondent states that it registered the disputed domain name prior to the existence of Complainant’s alleged trademark, and prior to Complainant’s registration of its alternate domain names. Since Respondent acted prior to the existence of Complainant’s alleged trademark, Respondent could not have registered the disputed domain name in bad faith.

Respondent requests the Panel to reject Complainant’s request.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Complainant and Respondent have each filed submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

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

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant is based in Canada. Complainant alleges that it holds common law trademark rights in the term “symbility”, and alleges that it has been doing business over the Internet in “North America” since July 2002. Complainant has not specifically indicated the geographic location of its alleged common law trademark rights.

Beyond its claim to common law trademark rights, Complainant has provided no suggestion or guidance to the Panel regarding the jurisdiction in which it is asserting those rights, or the legal standards it thinks applicable to so establishing them.

The Panel might ordinarily assume that Complainant is asserting common law trademark rights in Canada and not, for example, in the United States (or Mexico), but for Complainant’s reference to doing business in “North America”. In default of better guidance, the Panel will assume that as a Canadian enterprise, Complainant is asserting Canadian common law trademark rights.

Beyond asserting that it has been doing business since July 2002, Complainant has submitted no evidence of its alleged operations.

The Panel accepts that common law trademark rights are available in Canada (see, e.g., Stokes Seeds, Ltd. v. Peter Carrington, WIPO Case No. D2004-0526). However, the standards by which common law trademark rights are established vary from jurisdiction to jurisdiction, involving potentially complex issues (see, e.g., Two Pesos v. Taco Cabana, 505 U.S. 763 (1992)). The Panel does not consider it appropriate, in addition to making an assumption regarding the jurisdiction or jurisdictions in which the common law rights may be claimed, also to determine, without any suggestion as to applicable standards from Complainant, the criteria to be applied.

The Panel declines to find that Complainant has rights in the SYMBILITY trademark, without prejudice to whether Complainant might establish such rights in another instance.

In different circumstances than those here, the Panel might have made a request to Complainant to provide further information regarding the legal standards it considers applicable to its claim of common law trademark rights. Here, however, Complainant’s efforts would be unavailing even were it to establish common law trademark rights. This is so because Respondent has demonstrated that it registered the disputed domain name in April 2002, before Complainant even suggests that it started using the term SYMBILITY in connection with its business, (i.e., in July 2002). Respondent has alleged that it investigated the trademark status of the term SYMBILITY in several jurisdictions prior to registration of the disputed domain name, and conducted an Internet search for the term with no results.

On this evidence, Respondent did not register the disputed domain name in bad faith. It could not have had any intention to take advantage of Complainant’s alleged common law trademark because that trademark did not exist, on Complainant’s version of the facts, at the time the disputed domain name was registered.

Therefore, the question whether Complainant established common law trademark rights in SYMBILITY on or after July 2002 is essentially moot from the standpoint of determining the outcome of these proceedings.

Complainant must establish each of three elements required by Paragraph 4 of the Policy for a finding of abusive domain name registration and use. Since Complainant has not established that Respondent registered the disputed domain name in bad faith, it cannot succeed. The Panel need not examine other issues that have been raised.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Frederick M. Abbott
Sole Panelist

Dated: June 11, 2007