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and Mediation Center
ADMINISTRATIVE PANEL DECISION
HelpCaster Technologies Inc. v. Venkatesh, C.R. and DotCom Infoway
Case No. D2007-0603
1. The Parties
The Complainant is HelpCaster Technologies Inc., of Toronto, Ontario M5J, Canada, represented by Fasken Martineau DuMoulin, LLP, Canada.
The Respondents are Venkatesh, C.R. and DotCom Infoway, of Tamilnadu, India (referred to collectively as “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <livereach.com> is registered with Dotster, Inc, and was created on April 11, 2004.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2007. Copies of the Complaint were served on Respondent DotCom Infoway and the Registrar by courier. On April 23, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On April 24, 2007, Dotster, Inc. transmitted by email to the Center its verification response stating that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 11, 2007. The Center verified that the Complaint, together with the amendment to 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 Respondent of the amended Complaint, by e-mail to the registrant and administrative, technical and billing contact address provided by the Registrar, and by courier to each of the Respondents at the addresses provided by the Registrar, and the proceedings commenced on May 29, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2007. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on June 21, 2007.
On June 27, 2007, the Center received a letter, addressed to the applicable Case Manager, dated June 16, 2007 from the Chennai law firm of Sai Bahrath & Ilan on behalf of Respondent DotCom Infoway. The letter enclosed a copy of a letter dated May 4, 2007 (“the reply letter”) to Complainant’s solicitors purporting to respond to their letter of February 12, 2007 (“the letter of demand”).
On July 1, 2007, the Center received from Respondent Venkatesh an e-mail stating that the Complaint had not been received from the Center. In reply the Center advised that notice of the Complaint and Commencement of Administrative Proceedings and the Complaint had been served by e-mail and by courier to the physical addresses provided by the “Whois” for the domain name and by the Registrar and that the two courier deliveries had been received and signed for on May 31, 2007 and June 1, 2007 respectively. The Center further noted that Respondent’s solicitor’s letter dated June 16, 2007 (received by the Center on June 27, 2007) had been addressed personally to the correctly-identified Case Manager, a fact that could only have been known from the Center’s e-mail and/or courier communications of the Notification of Complaint. The Center treated the Respondent’s hardcopy communications dated June 16, 2007 (received by the Center on June 27, 2007) and July 1, 2007 as Supplemental Filings, to be dealt with in the discretion of the Panel, and so advised the Respondents. After the appointment of this Panel, on July 20, 2007, the Center received a submission titled “Response” from Respondent DotCom Infoway Ltd. This submission was also acknowledged by the Center as a Supplemental Filing.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 3, 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.
The Panel has examined the record of e-mail and courier deliveries of the Complaint and the Notification of Complaint and Commencement of Administrative Proceedings and is satisfied that Complaint was duly served in accordance with para 4 of the Rules. On the face of the evidence the Panel does not find credible Respondent’s assertion that the documents were not received.
None of Respondent’s communications were received by the Center within the time prescribed by Rule 5(a) of the Rules. As noted the earliest communication from Respondent was received by the Center on June 27, 2007. Respondent was therefore clearly in default. It is entirely within the discretion of the Panel whether to admit late or supplemental filings (see for example AutoNation Holding Corp v. Rabea Alawneh, WIPO Case No. D2002-0058). The object of the Policy is to facilitate expeditious disposition of domain name disputes and the Policy and Rules provide clear and explicit procedures to be followed. In exceptional circumstances these procedures may be varied by the Panel (see e.g. paras 10(b),10(c) and12 of the Rules).
The Panel, in the exercise of its discretion and the application of Rule 10(b) of the Rules, decides to accept Respondent’s solicitors letter dated June 16, 2007 and attaching a letter dated May 4, 2007 from Respondent’s solicitors to the solicitors for Complainant as constituting appropriate information for consideration by the Panel. In the Panel’s view, while the letter dated June 16, 2007 could arguably have been sent by Respondent prior to the expiration of the due date for submission of a Response, and in that respect may warrant a degree of flexibility in the interests of procedural fairness in relation to the consideration of information contained therein, the Respondent’s submission of July 20, 2007 is another matter entirely. The Panel notes in this respect that the Respondent’s submission of July 20, 2007, which was correctly acknowledged by the Center as an unsolicited supplemental filing, was filed by the Respondent over a month after the due date for submission of a Response, and there appears to be no compelling explanation or exceptional circumstances that would warrant such a delay. The panel declines to accept the Respondent’s submission filed with the Center on July 20, 2007.
4. Factual Background
Complainant is a Canadian company incorporated in the state of Ontario in May 2000. It carries on business developing and providing interactive software for use in internet communications. It is the registered proprietor of registrations of the trademark LIVEREACH registered in Canada and the United States on the basis of a first application filed in Canada on February 29, 2003 and claiming, in the case of the US application a first use in commerce on January 20, 2003. The marks were registered in Canada on May 12, 2004 and in the United States of America on July 27, 2004. Complainant claims to have used the trademark LIVEREACH continuously since January 2003 in Canada and the United States of America in respect of computer software for linking a website visitor from a functional queue supporting audio, text and video communications via the worldwide web. Complainant promotes its goods and services via its website at “www.helpcaster.com”, “www.helpcaster.ca” and “www.helpcaster.fr”
Complainant claims to have used its LIVEREACH trademark on its “www.helpcaster.com” website since January 2003. It claims to have had 1.5 million hits and 12,000 visitors to that website in the period September 2006 to February 2007. It claims to have spent between 70,000 and 100,000 Canadian dollars on promotion of the LIVEREACH trademark in 2007. Exhibit I to the Complaint contains marketing material put out by Complainant in the period 2004 to 2006. To the extent that it can be determined by inspecting the material exhibited, it appears that much of this material dates from the year 2006. The earliest datable examples are from April 6, 2004 promoting inter alia software for PC to PC chat programs, voice over internet protocol programs and callback programs. Exhibit J to the Complaint notes examples of Complainant’s online meeting center service dated June 9, 2006 and February 2, 2007 respectively.
No information is available in respect of the Respondent save for that contained in Exhibit P to the Complaint and Respondent’s solicitor’s reply letter of May 4, 2007. Respondent asserts that it is an established Indian software company established in May 2000 and that it independently coined the name LIVEREACH for its services. It claims to have registered the trademark LIVEREACH in India in Classes 9 and 35 and to have spent “huge amounts of money” on promotion. No information is provided as to the dates or status of the Indian trademark registrations nor of the claimed promotion expenditure. Respondent claims that it first heard of Complainant’s LIVEREACH trademark when it received the letter of demand of February 12, 2007.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical to its LIVEREACH mark and that by virtue of its use and promotion of its trademark in relation to its products and services the mark has become a distinctive identifier associated with them. Complainant claims that the name LIVEREACH has no meaning in English and was developed by Complainant for use in connection with its products. Complainant also contends that Respondent’s use of the LIVEREACH mark with a “TM” symbol is fraudulent in view of Complainant’s ownership of registrations of the LIVEREACH mark in Canada and the United States of America.
Complainant contends that Respondent’s use of the domain name is not a bona fide offering of services under the domain name as it does not have any licence or authority to use the name. It asserts that Complainant’s LIVEREACH mark has been communicated worldwide by internet press and otherwise prior to registration of the domain name and that Respondent was no doubt aware of Complainant’s mark. Complainant contends that for the Respondent’s use to be legitimate under the Policy the use must be non-infringing use and cites Chanel, Inc v. Estco Technology Group, WIPO Case No. D2000-0413 in support.
Complainant contends that the domain name has been registered and used in bad faith in a deliberate attempt to profit by creating the likelihood of confusion with Complainant’s LIVEREACH mark or alternatively an attempt to disrupt the business activities of Complainant. The Complainant asserts that Respondent had constructive notice of Complainant’s mark by virtue of its registration in Canada and US and use on the internet since 2003 and that as a direct competitor of the Complainant, Respondent must have been, or ought to have been, aware of the Complainant’s LIVEREACH mark. Complainant also cites as evidence of bad faith Respondent’s failure to respond to Complainant’s solicitor’s letter of demand by the stated deadline, namely February 23, 2007.
The Respondent has not timely filed a formal Response. However, by its reply letter of May 4, 2007 to Complainant’s solicitors it asserts the matters set out in paragraph 4 above and further contends that Complainant has infringed the trademarks of the Respondent by unauthorized use of LIVEREACH.
6. Discussion and Findings
In order for Complainant to succeed it must establish the following:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to a trademark in which Complainant has rights. The omission of spaces and the addition of the “.com” domain designator is immaterial (see for example, Ansell Healthcare Products Inc v. Australia Therapeutic Supplies Ltd,
WIPO Case No. D2001-0110). For the purposes of paragraph 4(a)(i) it is immaterial that Respondent also claims rights in the same trademark. The Panel therefore finds the first requirement of the Policy to be satisfied.
B. Rights or Legitimate Interests
Whilst the onus is on Complainant to make out each of the grounds specified in paragraph 4(a) of the Policy, facts relating to the circumstances set forth in paragraph 4(a)(ii) are usually principally in the hands of Respondent and the onus reverts to Respondent on a prima facie showing. Paragraph 4(c) provides that the rights or legitimate interests of the Respondent in the domain name is demonstrated if before it had any notice of the dispute in relation to the domain name it used or had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Complainant’s evidence, and in particular Complainant’s Exhibit P indicates that prior to February 2007 Respondent was using the domain name in connection with its provision of software in the field of chat support services and e-mail management services. The printouts from Respondent’s website exhibited in Exhibit P to the Complaint bear a copyright notice showing the date 2005. The Panel therefore finds it reasonable to conclude that Respondent was using the domain name in relation to its services from at least 2005, a date well prior to the notice of dispute contained in Complainant’s solicitor’s letter of demand of February 2007. This conclusion is consistent with the submissions contained in Respondent’s solicitor’s reply letter of May 4, 2007 though absent supporting evidence the Panel finds these admissions of little probative value.
The question remains however as to whether or not that use was use in connection with the bona fide offering of those goods and services.
Although the Policy associates the word bona fide with the offering of goods or services rather than with the use of the domain name, many panelists have taken the view that lack of bona fides in the adoption or use of the domain name infects the bona fides of the offering of the goods or services (see for example Peter Frampton v Frampton Enterprises, Inc.
WIPO Case No. D2002-0141). It is necessary therefore to consider under paragraph 4(a)(ii) some of the issues which arise under paragraph 4(a)(iii). It is Complainant’s contention that at the time of adoption of the domain name Respondent knew, or ought to have known of Complainant’s pre-existing rights in its LIVEREACH trademark used in respect of substantially similar goods and services. It further contends that its US and Canadian registrations constitute constructive notice of such rights.
The difficulty faced by Complainant in sustaining its contention is that, although each party operates in substantially similar internet fields, those fields are crowded fields and it does not follow that an operator in India would necessarily or reasonably be expected to quickly become aware of the operations of another person in Canada or the United States. Although Complainant has provided extensive evidence of its use and promotion of its LIVEREACH trademark, very little of this, only two items, can be shown to date from prior to the date of registration of the domain name. Those items precede the date of registration of the domain name by only four days. The Panel does not consider this sufficient for itself to raise a presumption that at the date of registration of the domain name Respondent knew, or ought to have known, Complainant’s claim to rights in the trademark LIVEREACH which would infect the Respondent’s use and registration of the domain name. In the circumstances, the Panel does not accept that Complainant’s Canadian and United States registrations constitute a sufficient basis to apply the principle of constructive notice, especially to a person in another jurisdiction such as India, in the present case (see for example Alberto-Culver Company v. Pritpal Singh Channa,
WIPO Case No. D2002-0757).
The Panel therefore finds that Complainant has not established that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
In the light of the Panel’s finding and explaining under paragraph 4(a)(ii) of the Policy it is unnecessary to consider the position under paragraph 4(a)(iii). However, were it necessary to do so the Panel would, for the reasons set out above, find that Complainant had failed to demonstrate use or registration in bad faith. In addition to the elements referred to above, the Panel further notes that the frames of Respondent’s website shown in Exhibit P of the Complaint do not resemble the corresponding frames of Complainant’s website in Exhibit H or suggest in any way any association with, or attempt to emulate, Complainant’s website or business.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan
Dated: July 24, 2007