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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Daysoft Limited v. Newmarket International

Case No. D2008-1347

1. The Parties

The Complainant is Daysoft Limited of Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Murgitroyd & Company, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Newmarket International of New Hampshire, United States of America, represented by Nixon Peabody, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <daysoft.com> is registered with CSC Corporate Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2008. On September 4, 2008, the Center transmitted by email to CSC Corporate Domains, Inc. a request for registrar verification in connection with the domain name at issue. On September 9, 2008, CSC Corporate Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification that the complaint was administratively deficient, the Complainant filed an amended complaint on September 19, 2008. The Center verified that the amended 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 September 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2008. The Response was filed with the Center on October 8, 2008.

The Center appointed John Swinson as the sole panelist in this matter on October 27, 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 is based in the United Kingdom. It is involved in the business of producing daily disposable contact lenses. It operates a website for its business at “www.daysoftlenses.com”, and sells its product all over the world.

The Complainant owns registered and pending trade marks over “daysoft” in various countries, including:

- United States Trademark Registration No. 3216070 for daysoft, registered from March 6, 2007;

- Canada Application No. 1291980 for DAYSOFT, filed on February 28, 2006;

- United Kingdom Trade Mark Registration No. 2221158 for daysoft; DAYSOFT, registered from July 7, 2000;

- Community Trade Mark Registration No. 2551414 for daysoft, registered from May 23, 2003.

The Respondent’s headquarters are in New Hampshire, United States of America. It also has offices in London, Shanghai and Singapore. The Respondent’s website at “www.newmarketinc.com” states that its business involves providing sales, group catering and banquet software solutions to the global hospitality and entertainment industries. These software solutions are used in hotels, casinos, restaurants, meeting arenas and convention centers in 110 countries.

The Respondent provides a range of products and professional services. One product offered is the “DAYLIGHT” product ― a sales and catering solution designed to function in hospitality and gaming organizations.

The disputed domain name was registered on January 10, 1999. The website at the disputed domain name is not operational.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant owns registered and pending trade mark applications for the trade mark “DAYSOFT” or “daysoft” in various countries around the world. An example is United States Federal Trademark Registration No. 3216070 “daysoft”, which covers goods relating to contact lenses and related items. The “daysoft” trade mark is also used in respect of similar goods in the United Kingdom and European Union.

The disputed domain name is identical to the Complainant’s registered trade mark.

The Respondent’s name does not incorporate any reference to “daysoft”. To the Complainant’s knowledge, the Respondent has never been known by the name “daysoft” at any time, and does not appear to have sold goods or services under this name. The Respondent’s business relates to hospitality sales and distribution automation, so there is no valid reason why the Respondent chose to register the domain name which bears no reference to the Respondent’s services.

“Daysoft” is an invented word, which is indicative of the Complainant’s business and goods sold under the Complainant’s trade mark.

The Complainant has found no evidence of use of the disputed domain name by the Respondent even though the Respondent has held the domain since January 10, 1999. By monopolizing the disputed domain name, the Respondent is preventing the Complainant from using the domain name which wholly incorporates the Complainant’s trade mark. As a result, the Complainant has had to register a different domain name which is more difficult to remember, in order to sell its product over the Internet.

There is a danger that if the Respondent starts to use the disputed domain name in the future, it will cause confusion with the Complainant’s potential or existing customers. It will also discourage those customers from doing business with the Complainant, as the disputed domain name will lead customers to a website promoting goods or services which are entirely different to the Complainant’s goods and services.

The Complainant tried to contact the Respondent in 2007 with a view to obtaining the disputed domain name, but received no reply. In August 2008, the Respondent advised the Complainant it would sell the disputed domain name for ВЈ35,000.

The Respondent claims to have been developing a product for which the disputed domain name will be used, but there is no evidence of what this might be. The fact that the Respondent is willing to forego all previous work on the domain name and sell it to the Complainant indicates that the Respondent was aware in the Complainant’s likely interest in the name and existing trade marks, and is taking advantage of that fact to make money out of the domain name.

B. Respondent

The Respondent makes the following contentions:

The Complainant must prove trade mark rights, but also that those rights were established prior to registration of the disputed domain name. The Complainant cannot prove this element.

The Respondent’s predecessor registered the disputed domain name before the Complainant acquired rights in the DAYSOFT mark. (The Panel notes here that the disputed domain name was registered on January 10, 1999 and the United States registration for “daysoft” in the name of the Complainant was filed on May 5, 2006. The United Kingdom trade mark application on which the Complainant relies was filed on March 2, 2000.)

Before any notice of the dispute, the Respondent used the disputed domain name and a name corresponding to the domain name in connection with a bona fide offering of goods and services.

The Respondent has used the trade mark DAYLIGHT for computer application software for use in the hospitality industry since June 1995. The Respondent is the owner of a United States trademark registration for DAYLIGHT filed on January 11, 1996. This mark claims first use of June 20, 1995. The registration for DAYLIGHT issued on June 3, 1997 and was renewed on June 19, 2007.

The Respondent purchased all rights in and to the DAYLIGHT trade mark on April 19, 2006 from its predecessor, Daylight Software, Inc. The Respondent also purchased the disputed domain name and other assets of Daylight Software, Inc.

The Respondent’s predecessor Daylight Software, registered and used the disputed domain name as the domain address for its principal website. Computer application software was originally sold at the website associated with the disputed domain name from 2002 to 2005, although the software is now sold at the Respondent’s current website at “www.newmarketinc.com”. The Respondent has a continuing interest in the disputed domain name.

There is a right to and legitimate interest in the disputed domain name, because at the time of registration, the Respondent’s predecessor had a business name of Daylight Software and owned the DAYLIGHT trade mark.

The Complainant did not make any effort to contact the Respondent until eight years after the disputed domain name was registered. It would have been impossible for the Respondent to have registered the disputed domain name with intent to sell the name to the Complainant, as the Respondent did not know that the Complainant existed.

The Respondent’s and Complainant’s domain names, business names, marks and businesses have coexisted for years without any actual confusion, which suggests any future confusion is unlikely.

The Respondent did not register the disputed domain name in bad faith.

The Respondent first learned of the Complainant in 2007 when it received an email from the Complainant, indicating that it wished to purchase the disputed domain name. The Respondent was not interested in selling the disputed domain name so did not pursue the matter further. When a further request was sent in August 2008, the Respondent replied “we have a future plan for this site built around one of our product lines. However, I would be open to a discussion of selling the domain name if was important to your business”. The Respondent was then called by the Complainant to discuss any sale, and the necessary transition the Respondent would have to manage. The Respondent then advised the Complainant that based on the effort put into the disputed domain name, it would be worth £35,000. Although the Complainant said that it would provide a reply, the Respondent never received one. It was the Complainant who contacted the Respondent to purchase the disputed domain name. The Respondent did not initiate this matter and only made an offer to sell the disputed domain name after the Complainant made an unsolicited offer to purchase it.

The offer to sell a disputed domain name does not constitute bad faith unless the Respondent registered the name primarily for the purpose of capitalizing on the trade mark in the name, by selling it to the trade mark owner ― this is not the case here. The Respondent’s predecessor registered the disputed domain name to offer its goods and services, and not to profit from any goodwill in the Complainants’ mark, which was not known to the Respondent until 8 years later.

Further, the Respondent did not register the domain name on any other grounds of bad faith ― to prevent the owner of a trade mark from reflecting the mark in a domain name, because there is no pattern of such conduct; to disrupt the business of a competitor, because the Respondent sells computer software; or to intentionally attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, because the website is not currently active.

The Complaint was brought in bad faith primarily to harass the Respondent, and a finding of reverse domain name hijacking should be found. The Complainant acted recklessly and with knowing disregard of the likelihood that Respondent had legitimate rights in the disputed domain name, because the Complainant knew of the priority date of registration of the domain name and Respondent’s DAYLIGHT trade mark. Fully accessible Internet archives for the disputed domain name show that it was used by the Respondent’s predecessor for the bona fide offering of computer software from 2002 to 2005. The Complainant has not shown any evidence that the Respondent should have been aware of the Complainant back in 1999.

6 Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in paragraph 4(a) of the Policy):

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied.

A. Identical or Confusingly Similar

The Complainant has registered trade mark rights over the term DAYSOFT and/or “daysoft”, in the United States, United Kingdom and European Union (United States Trademark Registration No. 3216070; United Kingdom Trade Mark Registration No. 2221158 and Community Trade Mark Registration No. 2551414). These trade mark registrations cover contact lenses and related items such as contact lens cleaning solution.

Ignoring the “.com” suffix, the Complainant’s trade mark is identical to the disputed domain name.

The Respondent contends that the Complainant must prove that its trade mark rights were established prior to the registration of the disputed domain name. While this may be relevant to other elements, the Complainant is not required to prove this in order to satisfy paragraph 4(a)(i).

Accordingly, the Panel finds that the first element has been met.

B. Rights or Legitimate Interests

Paragraphs 4(b)(i) to (iii) of the Policy list three ways in which a respondent can demonstrate rights or legitimate interests in a disputed domain name. These are:

(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has provided evidence to show that:

- the Respondent is not currently using the disputed domain name, and therefore is not using the domain name to provide goods and services.

- the Respondent is not currently known as “Daysoft”.

- DAYSOFT has no apparent connection to the goods and services that the Respondent does provide (hospitality software).

The Respondent is not currently using the disputed domain name for any purpose, and by the Respondent’s own admissions it has not been used since perhaps 2005. Therefore the Respondent would be unable to prove rights or legitimate interests on the basis of “making a legitimate noncommercial or fair use of the domain name” under paragraph 4(b)(iii).

Relevant to the other two subparagraphs, the Respondent claims that its predecessor was called Daylight Software, Inc. and indicates that the disputed domain name was chosen as it incorporates components from both terms: i.e., Daylight and Software.

Apart from the mere statement of its predecessor’s name, the Respondent does not provide any additional evidence that its predecessor was commonly known as DaySoft (as an abbreviation for Daylight Software). Accordingly, in the Panel’s view there is not sufficient evidence provided in the Response to demonstrate rights or legitimate interests under paragraph 4(b)(ii).

In the rights or legitimate interest section of its Response, the Respondent places a lot of emphasis on its trade mark registration for “DAYLIGHT”. In the Panel’s view, that trade mark is of little relevance to this decision. The trade mark DAYLIGHT is different to the disputed domain name of <daysoft.com>. However the Panel accepts that “Daylight” is the name of a product (computer application software for use in the hospitality industry) which was sold by the Respondent’s predecessor and is now sold by the Respondent.

The Respondent has provided copies of archived versions of the website operating from the disputed domain name. These pages confirm that in 2002, 2003, 2004 and 2006, a product called DAYLIGHT and perhaps other products were being promoted on the website as an advanced sales and catering software solution.

In the absence of any evidence to the contrary, the Panel accepts that before any prior notice of the Complainant’s concerns (which first arose in 2007), the Respondent’s predecessor was using the disputed domain name in connection with a bona fide offering of goods and services. The Panel infers that such offering was at the time bona fide, as the goods and services being provided were not in competition with the Complainant’s goods and services, and they are the same goods and services being provided by the Respondent today. The Panel also notes the same goods and services were offered from the website over a significant period of time (at least three years).

The Complainant has not been able to show that the Respondent’s predecessor, at the time of registration of the disputed domain name, knew or should have known of the existence of the Complainant’s trade mark rights in DAYSOFT. Accordingly, there is no evidence suggesting that the disputed domain name was chosen by the Respondent’s predecessor with the intent to profit from the Complainant’s trade mark rights.

The fact that the disputed domain name has not been used by the Respondent since it acquired the business of its predecessor, does not affect this finding.

The Complainant asserts that the Respondent’s non-use of the disputed domain name (passive holding) demonstrates that the domain name is being used in bad faith. In the Panel’s view, not all circumstances of passive holding amount to use of a domain name in bad faith, and the facts and circumstances of passive holding must be examined on a case to case basis.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 the circumstances that indicated that passive holding amounted to use of domain name in bad faith were:

- the complainant’s trade mark was widely known;

- the respondent had never used the domain name, provided no evidence that they intended to use it and it was not possible to conceive the respondent using the domain name in any legitimate way; and

- the respondent concealed their identity and did not provide a response to the complaint.

In this case the Complainant’s reputation and trade mark were not so widely known that the Respondent’s predecessor would have been aware of them when the disputed domain name was registered. Therefore the Complainant has no grounds to argue that the Respondent registered the disputed domain name with the intent to prevent the Complainant from using the disputed domain name. Second, the Respondent previously used the disputed domain name as its primary website between 2002 to 2006 and it is conceivable that the Respondent can legitimately use the disputed domain name in the future when considering that its predecessor was known as Daylight Software and actively used the disputed domain name to advertise computer application software which is still sold by the Respondent. Finally, the Respondent has not concealed its identity and has responded to the Complaint.

As none of the three elements of passive holding in bad faith from the Telstra case are applicable here, the Panel finds that the Respondent’s non-use of the disputed domain name after 2006 does not constitute bad faith.

The Complainant also relies on the Respondent’s offer to sell the domain name for £35,000 as evidence that the Respondent registered the domain name in bad faith. In some circumstances an offer to sell the domain name can indicate that it was registered in bad faith especially when a respondent offers to sell the domain name at an inflated price and it becomes apparent that the respondent is very knowledgeable about the complainant’s business (see for example, Allied Building Products Corp. v. Richard Henkel, WIPO Case No. D2006-0829). Factors that indicate that an offer of sale is not evidence of registration and use in bad faith are:

(i) the domain name is registered many years before the respondent makes an offer of sale and it was unlikely that the respondent knew of the complainant at the time of registration (see SOUTHBank v. Media Street, WIPO Case No. D2001-0294);

(ii) the complainant first solicited an offer of purchase (see SOUTHBank v. Media Street, WIPO Case No. D2001-0294);

(iii) where the respondent had legitimate interests in the domain name and offered to sell the domain name at a reasonable market price (above out of pocket expenses) (see Avnet, Inc. v. Aviation Network, Inc, WIPO Case No. D2000-0046).

Based on this authority, the Panel is of the view that the Respondent’s offer to sell the domain name to the Complainant does not evidence bad faith. First, the Respondent registered the domain name nine years before the offer of sale was made. Second, the Respondent had legitimate interests in the disputed domain name and therefore legitimately offered to sell the disputed domain name to the Complainant for a price more than its out-of-pocket expenses. Finally, the offer of sale was in reply to the Complainant’s enquiries about purchasing the disputed domain name.

The Panel therefore finds that the Respondent has rights and legitimate interests in the disputed domain name, and therefore the Complainant has failed to satisfy the second element.

C. Registered and Used in Bad Faith

Since the Respondent has a legitimate interest in the disputed domain name, it is not necessary for the Panel to consider the issue of bad faith. The Panel has addressed some of the Complainant’s regarding bad faith in the section above.

D. Reverse domain name hijacking

The Respondent has asked that a finding of reverse domain name hijacking be made against the Complainant.

Paragraph 15(e) of the Rules states:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Reverse domain name hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified. While the Complainant may have known that the registration date of the disputed domain name predated its earliest trade mark rights, it does not automatically follow that the Respondent would be shown to have rights or legitimate interests. The date of the disputed domain name registration and the United Kingdom trade mark rights were fairly close in time. There is also no clear evidence that the Complainant was aware or should have been aware of the Respondent’s predecessors trading name, or previous use of the website.

The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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John Swinson
Sole Panelist

Dated: November 10, 2008