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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Run-Time Consulting Inc. v. BetterMarketing Inc. o/a Agito Internet Marketing

Case No. D2008-1062

1. The Parties

The Complainant is Run-Time Consulting Inc., Canada, represented by Rohit Parekh, Canada.

The Respondent is BetterMarketing Inc. o/a Agito Internet Marketing, Canada.

2. The Domain Name and Registrar

The disputed domain name <salesexpander.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 14, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On July 14, 2008, Tucows 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 July 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2008. The Response was filed with the Center on August 12, 2008. An Amended Response was filed with the Center on August 13, 2008.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 25, 2008. 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

The Complainant carries on a consulting business, assisting other enterprises in maximizing sales through the use of automated sales processes and products. The Complainant provides its services primarily through the Internet and websites. Recently (in July, 2008), the Complainant filed a Canadian trademark application for SALESEXPANDER, claiming a date of first use of May, 2003 in connection with sales management software and related wares and services. The Complainant has also used a number of other “expander” suffixed marks, such as HOSTEXPANDER, CONTESTEXPANDER, DATABASEEXPANDER, and RECRUITEXPANDER.

The Respondent registered the domain name <salesexpander.com> on March 1, 2004.

In 2004, the Complainant and the Respondent entered into a contractual arrangement, wherein the Respondent was responsible to develop certain technology and provide technical support to the Complainant. As part of the arrangement, the Complainant used the domain name <salesexpander.com> to direct Internet users to its business.

The contractual relationship between the parties came to an end in June, 2008 Subsequently, Complainant requested the transfer of the domain name, but the Respondent has refused to make any such transfer.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the domain name <salesexpander.com> is confusingly similar to the Complainant’s common law trademark SALESEXPANDER. The Complainant submits that the domain name <salesexpander.com> incorporates the Complainant’s common law mark in its entirety, with only the addition of the extension “.com”.

(b) Rights or Legitimate Interests

The Complainant contends that the Respondent is not the rightful owner of the SALESEXPANDER common law mark. The Complainant submits that the Respondent is not generally known by the subject domain name, and that the Respondent has not acquired any trademark rights or other service mark rights in the domain name. The Complainant’s rights in the SALESEXPANDER common law mark pre-date the registration of the domain name <salesexpander.com>. The Complainant also submits that the Respondent, pursuant to their contractual arrangement, only handled the technical part of the SALESEXPANDER-branded services and products, and that it was the Complainant who was responsible for the provision of services and products through the website. The Complainant contends that the Respondent has not established any legitimate right or interest in the disputed domain name.

(c) Registered and Used in Bad Faith

The Complainant contends that the domain name <salesexpander.com> has been registered and is being used in bad faith based on the following factors: (i) the Respondent’s knowledge of the Complainant’s rights in the SALESEXPANDER common law mark at the time of registration of the disputed domain name; (ii) the Respondent registered the domain name <salesexpander.com> on behalf of the Complainant, but ownership of the domain name always resided with the Complainant; (iii) the Respondent’s registration of a confusingly similar domain name; (iv) the Respondent’s refusal to transfer the domain name <salesexpander.com> to the Complainant after the contractual arrangement with the Complainant was terminated; and (v) the Respondent’s use of the confusingly similar domain name to operate a website to divert Internet traffic to the Respondent’s website, which disrupts the Complainant’s business.

B. Respondent

(a) Identical or Confusingly Similar

The Respondent submits that the Complainant does not own the common law mark SALESEXPANDER. The Respondent claims that it was the developer and is now the sole owner of the mark and the domain name <salesexpander.com>.

(b) Rights or Legitimate Interests

The Respondent admits that the contractual arrangement between the Complainant and the Respondent provided the Complainant with exclusive use of the domain name <salesexpander.com>, but claims that at no time did the Complainant have any ownership rights in the subject domain name. The Respondent submits that there is no documentary evidence to support the Complainant’s claim for ownership, and submits that the domain name and the associated website have always been under the control of the Respondent.

(c) Registered and Used in Bad Faith

The Respondent submits that it has always maintained all ownership rights to the <salesexpander.com> domain name. The Complainant was only given the right to use the domain name as part of an agreement between the parties. The Respondent states that this agreement has now been terminated and as a result, the Complainant no longer has any rights to use the subject domain name. The Complainant’s attempts to renegotiate the contractual arrangement were ultimately rejected by the Respondent. It was only after this termination that the Complainant filed a trademark application for the mark SALESEXPANDER with the Canadian Trademarks Office. The Respondent submits that it is using the domain name in good faith, as it is the named and actual owner of the <salesexpander.com> domain name.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has founded its claim on what are purely common law rights in the SALESEXPANDER trademark. However, Complainant has not proven its common law rights in any tangible form. There is no evidence of the extent of sales, marketing or advertising, or any of the typical indicia which would allow the Panel to find that there is in fact an established reputation in the SALESEXPANDER mark. The mere existence of a Canadian trademark application, filed after the contractual dispute arose, has virtually no probative value on this issue. The evidentiary record is simply not sufficient to support a factual finding that the Complainant has rights in the SALESEXPANDER trademark.

The Panel also notes that the Respondent has vigorously disputed the ownership issue, claiming that it is the proper owner of the domain name, and that the Complainant’s use was authorized and licensed by virtue of the contractual relationship between the parties. The Respondent relies on the absence of any documentary evidence showing that the parties intended for ownership ultimately to be held in the name of the Complainant.

Though the Respondent’s conclusions may be debatable, the absence of documentary evidence on the crucial ownership issue is vitally important to the disposition of this proceeding. Indeed, it is impossible for this Panel to make any finding on this point. The conflicting views and recollections of the parties will need to be tested in a forum which permits a full evidentiary record, far beyond what is available to this Panel.

At its core, this dispute involves the termination of a contractual relationship between the parties. Ownership of the domain name in question is inextricably tied to the contractual context that governed the parties over the 4 years in which the relationship continued.

Details of the contractual arrangement between the parties were not put into evidence in these proceedings and accordingly, the terms of that arrangement cannot be determined at this time. The Panel is not in a position on the present record to make findings or a decision with respect to disputed contractual issues between the parties. In any event, analytical construction of contractual terms is beyond the mandate and jurisdiction of the Panel, as it would require a far more complete evidentiary record than that which has been put forward in these types of proceedings. Prior panelists have held that disputes which turn on contractual interpretations may fall outside the scope of the Policy, particularly where there this is limited documentary evidence or contractual terms themselves may be unclear or in dispute. (see Private Media Group v. Anton Enterprises Inc., d/b/a Private USA, WIPO Case No. D2002-0692 and S.K.I. Sociйtй des Lubrifiants IPONE v. CLIX International, L.L.C., Carbon Development, Chad Boulton, WIPO Case No. D2004-0334).

For these reasons, the Panel finds that the Complainant has failed to establish that it has rights in the subject common law mark. Accordingly, the Complainant has failed to satisfy the first threshold requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

For the purposes of paragraph 4(a)(ii) of the Policy, the Panel must establish whether the Respondent had a legitimate interest or right in the domain name.

In situations such as the present case, where the parties have entered into and maintained a commercial relationship, the Complainant faces an onerous burden of proof, requiring more comprehensive evidence than that which is necessary in the typical dispute between unrelated adversaries. At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise.

Taking the evidence as it stands and bearing in mind the limited evidentiary record put forward by the Complainant, the Panel is unable to conclude that the Respondent did not have a legitimate interest or right in the domain name <salesexpander.com>.

For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent did not have a legitimate interest or right in the <salesexpander.com> domain name within the meaning of the Policy. The Panel is aware that this dispute may now be brought before the appropriate court, and believes that it is prudent to leave the decision on its merits to such a decision maker, with the benefit of a full evidentiary record and the ability to construe and interpret the contractual terms which will ultimately govern this dispute.

C. Registered and Used in Bad Faith

In light of the conclusions with respect to confusing similarity and legitimate interest, the Panel finds it unnecessary to make any findings in connection with bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Christopher J. Pibus
Sole Panelist

Date: September 8, 2008